| To: | KTM AG (ngingo@rennerotto.com) |
| Subject: | U.S. Trademark Application Serial No. 90359640 - GASGAS - KTMGT0132US |
| Sent: | May 26, 2021 10:44:39 AM |
| Sent As: | ecom127@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 90359640
Mark: GASGAS
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Correspondence Address: |
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Applicant: KTM AG
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Reference/Docket No. KTMGT0132US
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: May 26, 2021
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues 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
Applies to class 012 ONLY
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2365643. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Standard of Analysis:
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. 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.
The applicant has applied to register the mark GASGAS in standard characters for the following goods:
The cited mark is as follows:
· GAS GAS (in standard characters) in Registration No. 2365643 for “motorcycles and structural parts therefor”.
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).
Comparison of the Goods:
The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi). 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).
The registration covers “motorcycles” and “structural parts therefore”. The application covers “motorcycles”, “small motorcycles”, “Vehicles and parts thereof”, “tanks as parts of motorcycles”, and “motorcycle frames”.
Here, the goods in the application and registration are identical in part. Both the application and registration cover “motorcycles”. Therefore, it is presumed that the channels of trade and class of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).
Similarly, the application uses broad wording to describe “Vehicles and parts thereof, which presumably encompasses all goods of the type described, including registrant’s more narrow “motorcycles and structural parts therefore”. Additionally, the registration uses broad wording to describe “motorcycles and structural parts therefore”, which presumably encompasses all goods of the type described, including applicant’s more narrow “small motorcycles”, “tanks as parts of motorcycles”, and “motorcycle frames”. 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). Thus, applicant’s and registrant’s goods 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)).
Additionally, the goods 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)). Thus, applicant’s and registrant’s goods are related.
Conclusion:
The similarity between the applicant's mark and the registered mark, and the relatedness of the applicant's goods to the registrant’s goods, is so great as to create a likelihood of confusion. Thus, registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2365643. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. Applicant should also note the following requirements.
AMENDED IDENTIFICATION OF GOODS REQUIRED
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods may not later be reinserted. TMEP §1402.07(e).
The wording “protective clothing to prevent injuries for motorcyclists”, “protective gloves”, and “shoes” in the identification of goods is indefinite and must be clarified because it is not clear the clothing is protective against accidents. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clarify as such.
The wording “helmets” in the identification of goods is indefinite and must be clarified because the use of the helmets is not specified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must specify the use of the helmets, e.g. for motorcycles.
The wording “vehicles” in the identification of goods is indefinite and must be clarified because the exact type of vehicle is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clarify the type of vehicle.
The wording “parts thereof” generally in the identification of goods is indefinite and must be clarified because the specific type of part is not stated. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must state the generic name for each type of part and classify them accordingly.
The wording “scooters” in the identification of goods is indefinite and must be clarified because they type of scooter is not stated. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clarify if they mean motorized or push scooters.
The wording “brake linings” in the identification of goods is indefinite and must be clarified because the use of the goods is not clear and thus could include goods in multiple classes. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, brake lining for vehicles are in class 012, while brake linings other than for vehicles are in class 007. Applicant must state the use of the goods and classify accordingly.
The wording “seat covers” and “covers” generally in the identification of goods is indefinite and must be clarified because it is not clear they are fitted. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clarify as such.
The wording “side mirrors for vehicles” in the identification of goods is indefinite and must be clarified because it is not clear applicant means side view mirrors and the type of vehicle for which they are made is not stated. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clarify they mean side view mirrors and state for why they of vehicle the mirror are meant.
The wording “e-bikes” and “pedelecs” in the identification of goods is indefinite and must be clarified because it is not clear applicant means electric bicycles. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clarify as such.
The wording “panniers” in the identification of goods is indefinite and must be clarified because it is not clear this is a type of bag. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clarify as such.
The wording “tank caps” in the identification of goods is indefinite and must be clarified because it is not clear they are for petrol tanks on motor vehicles. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clarify as such.
The wording “stands for motorcycles” in the identification of goods is indefinite and must be clarified because it is not clear they are of metal and are for holding the motorcycle upright. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clarify as such.
The wording “stands as parts of two-wheelers” and “pedals for two-wheelers” in the identification of goods is indefinite and must be clarified because it is not clear what type of vehicle these stands and pedals are for. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clarify the type of vehicle.
The wording “benches for motorcycles” in the identification of goods is indefinite and must be clarified because it is not clear the benches mean seats. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clarify as such.
The wording “number plate carrier” in the identification of goods is indefinite and must be clarified because it is not clear this is a number plate holder. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clarify as such.
The wording “tanks as parts of motorcycles” in the identification of goods is indefinite and must be clarified because it is not clear these are gas tanks. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clarify as such.
The wording “rims” in the identification of goods is indefinite and must be clarified because it is not clear these are for vehicle wheels. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clarify as such.
The wording “shock absorbers for vehicles” in the identification of goods is indefinite and must be clarified because it is not clear these are suspension shock absorbers. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clarify as such.
The wording “headlight holders” in the identification of goods is indefinite and must be clarified because it is not clear these are headlight mounts for motorcycles. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clarify as such.
The wording “clutch levers for” in the identification of goods is indefinite and must be clarified because it is not clear these are for land vehicles. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clarify as such.
The wording “brake levers for vehicles” in the identification of goods is indefinite and must be clarified because it is not clear these are for motorcycles. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clarify as such.
The wording “cranks” in the identification of goods is indefinite and must be clarified because it is not clear these are for a specific type of vehicle. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must state the specific type of vehicle.
The wording “ignition covers” in the identification of goods is indefinite and must be clarified because the use of the covers is not clear and could include goods in more than one class. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, ignition covers that are part of the engine are classified in class 007, which decorative ignition covers are in class 012. Applicant must clarify the type of ignition cover and classify the goods accordingly.
The wording “protective sleeve for motorcycles” in the identification of goods is indefinite and must be clarified because it is not clear this is a type of fitted cover. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clarify as such.
If applicant’s “clothing” is in International Class 25, applicant may amend the identification to insert the word “namely,” after “clothing” and then list the specific types of clothing items in that class (e.g., shirts, pants, coats, dresses).
The wording “headgear” in the identification of goods is indefinite and must be clarified because it is not clear this is a type of headwear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clarify as such.
The wording “caps” in the identification of goods is indefinite and must be clarified because it is indefinite and could include goods in multiple classes. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, “pistol caps” are in class 013, while “stocking caps” are in class 025. Applicant must clarify the type of caps and classify accordingly.
The wording “bibs” in the identification of goods is indefinite and must be clarified because it is indefinite and could include goods in multiple classes. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. For example, “bibs of paper” are in class 016, while “baby bibs” are in class 025. Applicant must clarify the type of bibs and classify accordingly.
Applicant may substitute the following wording, if accurate (changes in bold):
Class 007: Brake lining other than for vehicles; Motorcycle engine parts being ignition covers
Class 009: Eyeglasses; sunglasses; protective clothing to prevent injuries for motorcyclists for protection against accidents; protective clothing to prevent injuries for motorcyclists for protection against accidents in particular protective gloves; protective clothing for protection against accidents, namely, shoes; helmets for motorcyclists; protective clothing for protection against accidents, namely, protectors being knee and elbow pads; tachometers
Class 012: {specify type, e.g. land, etc.} Vehicles being {indicate common commercial name} and parts thereof, namely, {specify the name of the specific part}; bicycles; motorcycles; {specify push or motor} scooters; mopeds; small motorcycles; electrically propelled bicycles; training and educational bicycles and parts and accessories therefor, namely, {specify the name of the specific part and accessory}; engines for land vehicles; tires; wheels; brake linings for vehicles; adapted fitted seat covers for motor vehicles; bicycle saddles; motorcycle saddles; side view mirrors for vehicles, namely, specify type of vehicle, e.g. bicycles, motorcycles, automobiles, etc.}; e-bikes being electric bicycles; luggage carriers for vehicles; bicycle brakes; handlebars; fitted covering for vehicle bodies; panniers bags for motorcycles; petrol tank caps for motor vehicles; saddlebags and panniers bags for bicycles; metal stands for holding motorcycles in an upright position; stands as parts of bicycles; stands as parts of two-wheelers being {state the type of vehicle, e.g. bicycle, motorcycle, scooter, etc.}; benches in the nature of seats for motorcycles; gas tanks as parts of motorcycles; number plate holders for two-wheelers; mud guards for land vehicles; pedals for two-wheelers being {state the type of vehicle, e.g. bicycle, motorcycle, etc.}; rims for vehicle wheels; bicycle frames; suspension shock absorbers for vehicles; shock absorbers for bicycles; covers for bicycle saddles; covers for motorcycle saddles; bicycle bells; bicycle motors; bicycle pumps; motorcycle frames; pedelecs being electric bicycles; spoilers for vehicles; motorcycle parts being headlight mounts; clutch levers for land vehicles; sprockets for rear wheels; brake discs for motorcycles; brake levers for vehicles being motorcycles; cranks for {specify type of vehicle, e.g. motorcycle, etc.}; handles for bicycle handlebars; seat posts for bicycles; decorative motorcycle parts being ignition covers; protective sleeve being fitted covers for motorcycles; cranks for motorcycles; cranks for bicycles
Class 013: pistol caps
Class 016: paper baby bibs
Class 025: T - Shirts; sweatshirts; blousons; pullovers; shirts; parkas; trousers; overalls; gloves; gloves for motorcyclists; clothing for motorcyclists, namely, {specify specific items, e.g. pants, shirts, dresses, etc.}; underwear; socks; footwear; headgear being headwear; casual footwear; sandals; rubber boots; caps being headwear; bandanas being shawls for clothing; {specify type, e.g. waits, etc.} belts being clothing; clothing, namely, {specify specific items, e.g. pants, shirts, dresses, etc.}; jackets; waistcoats; scarves; polo shirts; jerseys; clothing for babies, namely, {specify specific items, e.g. pants, shirts, dresses, etc.}; clothing for children, namely, {specify specific items, e.g. pants, shirts, dresses, etc.}; baby bibs not of paper
Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods may not later be reinserted. See 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.
MULTIPLE CLASS APPLICATION REQUIREMENTS
The fee for adding classes to a TEAS Standard application is $350 per class. See 37 C.F.R. §2.6(a)(1)(iii). For more information about adding classes to an application, see the Multiple-class Application webpage.
(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 already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least six classes; however, applicant submitted a fee sufficient for only three classes. 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.
RESPONDING TO THIS OFFICE ACTION
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement 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. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
/Carolyn R. Detmer/
Carolyn R. Detmer
Examining Attorney
Law Office 127
571-272-2722
carolyn.detmer1@uspto.gov
RESPONSE GUIDANCE
