From: Tarcu, Catherine L.
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`Sent: 5/16/2015 11:14:47 AM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. TRADEMARK APPLICATION NO. 86149523 - ATEK ACCESS TECHNOLOGIES - 401975 -
`Request for Reconsideration Denied - Return to TTAB
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`*************************************************
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`Attachment Information:
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`Count: 1
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`Files: 86149523.doc
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`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. 86149523
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`MARK: ATEK ACCESS TECHNOLOGIES
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`CORRESPONDENT ADDRESS:
` KENNETH D. SUZAN
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` BARNES & THORNBURG LLP
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` 225 S 6TH ST STE 2800
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`*86149523*
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`GENERAL TRADEMARK INFORMATION:
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`http://www.uspto.gov/trademarks/index.jsp
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` MINNEAPOLIS, MN 55402-4662
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`VIEW YOUR APPLICATION FILE
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`APPLICANT: ATEK Access Technologies, LLC
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`CORRESPONDENT’S REFERENCE/DOCKET NO:
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` 401975
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`CORRESPONDENT E-MAIL ADDRESS:
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` Trademarks-MI@btlaw.com
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`REQUEST FOR RECONSIDERATION DENIED
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`ISSUE/MAILING DATE: 5/16/2015
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`This Action is in response to the applicant’s Request for Reconsideration filed on April 24, 2015.
`Before the issuance of this Action the examining attorney and attorney of record spoke several
`times via email and telephone in an attempt to resolve the Amendment of Identification of Goods
`issue via an Examiner’s Amendment. The applicant is encouraged to adopt the examining
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`attorney’s Identification of Goods Amendment suggestions identified below to obviate this
`refusal.
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`In addition, the Section 2(d) Likelihood of Confusion Refusal has been modified and limited to
`International Class 9 only. The attorney of record and the examining attorney discussed the
`option to divide out International Class 9 from this application in order to move the other
`international classes forward towards registration.
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`The applicant has satisfied the disclaimer requirement addressed in the Final Office Action. See
`TMEP §§715.03(a)(ii)(B), 715.04(a).
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`The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is
`denying the request for the reasons stated below. See 37 C.F.R. §2.63(b)(3); TMEP §§715.03(a)(ii)(B),
`715.04(a). The following requirement(s) and/or refusal(s) made final in the Office action dated October
`24, 2014 are maintained and continue to be final:
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`•
`Section 2(d) Likelihood of Confusion Refusal – Partial, International Class 9 Only
`• Amendment of Identification of Goods – Partial as to the Goods Identified Below in International
`Classes 6 and 9 Only
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`See TMEP §§715.03(a)(ii)(B), 715.04(a).
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`In the present case, applicant’s request has not resolved all the outstanding issue(s), nor does it raise a
`new issue or provide any new or compelling evidence with regard to the outstanding issue(s) in the final
`Office action. In addition, applicant’s analysis and arguments are not persuasive nor do they shed new
`light on the issues. Accordingly, the request is denied.
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`If applicant has already filed a timely notice of appeal with the Trademark Trial and Appeal Board, the
`Board will be notified to resume the appeal. See TMEP §715.04(a).
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`If no appeal has been filed and time remains in the six-month response period to the final Office action,
`applicant has the remainder of the response period to (1) comply with and/or overcome any
`outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board. TMEP
`§715.03(a)(ii)(B); see 37 C.F.R. §2.63(b)(1)-(3). The filing of a request for reconsideration does not stay
`or extend the time for filing an appeal. 37 C.F.R. §2.63(b)(3); see TMEP §§715.03, 715.03(a)(ii)(B), (c).
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`SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL – PARTIAL INTERNATIONAL CLASS 9 ONLY
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`This refusal has been limited to International Class 9 only. In the applicant’s Request for Reconsideration
`the applicant included a Coexistence Agreement with the owner of the cited registered marks. As
`discussed with the attorney of record, this Agreement does not obviate the finding of likelihood of
`confusion. The Agreement does not address the applicant’s current applied-for mark and the Agreement
`is from 2008. Therefore, this refusal is maintained and continued to be Final.
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`Registration of the applied-for mark remains refused as to International Class 9 because of a likelihood
`of confusion with the marks in U.S. Registration Nos. 2564858 and 2704493. Trademark Act Section 2(d),
`15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously enclosed registrations.
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`Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark
`that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of
`the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I.
`du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be
`considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP
`§1207.01. However, not all the factors are necessarily relevant or of equal weight, and any one factor
`may be dominant in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City
`Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co.,
`315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62,
`177 USPQ at 567.
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`In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods,
`and similarity of trade channels of the goods. See In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB
`1999); TMEP §§1207.01 et seq.
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`Similarity of the Marks
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`The respective marks are all substantially similar in sound, appearance, and meaning. 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir.
`2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); 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 Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751. In
`addition, 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); Presto Prods., Inc. v. Nice-Pak Prods., Inc.,
`9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be
`impressed upon the mind of a purchaser and remembered” when making purchasing decisions).
`Therefore, in this case, the dominant and first word (or only word) in the marks in this comparison is the
`term “ATEK.” Consumers are likely to focus on the dominant word “ATEK” in all of the marks in this
`comparison, and are likely to be confused as to the source of the origin of the marks in this comparison.
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`In addition, the marks sound similar because of the presence of the term “ATEK” in all of the marks.
`Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In
`re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d
`1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
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`Lastly, in addition to being substantially similar in regards to sound and appearance, the connotation
`and commercial impression does not change between the marks when used in connection with the
`applicant and registrant’s goods. Thus, the marks are confusingly similar.
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`Similarity of the Goods
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`In addition to the marks being similar in regards to sound, appearance, and meaning, the marks are also
`used in connection with similar goods. In this case the applicant’s mark is used in connection with a
`variety of electronic and computer related goods, such as “Electronic motion sensitive switches,
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`Electronic touch sensitive switches, and Electrical switches”, and the registrant’s goods are related to
`computer equipment such as “computer cables.” The goods in this comparison are similar because both
`are likely to be encountered by the same consumer through the same channels of trade and because the
`goods are likely to be manufactured or produced by the same source.
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`For example, the trademark examining attorney previously attached evidence from the USPTO’s X-
`Search database consisting of a number of third-party marks registered for use in connection with the
`same or similar goods as those of both applicant and registrant in this case. This evidence shows that the
`goods listed therein, namely, the applicant’s “electronic motion sensitive switches” and the registrant’s
`“computer cables” are of a kind that may emanate from a single source under a single mark. See In re
`Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009); In re Albert Trostel & Sons Co., 29 USPQ2d
`1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP
`§1207.01(d)(iii).
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`Please see the previously attached U.S. Registration Nos.: 4399843; 4391069; 3306761; 3176893; and
`3035447.
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`In addition, the previously attached third party registrations show that the registrant’s “computer
`cables” and the applicant’s “electrical switches” are related.
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`Please see the attached U.S. Registration Nos.: 4604562; 4398411; 4234148; and 4168379.
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`The goods of the parties 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) (“[E]ven if the goods
`in question are different from, and thus not related to, one another in kind, the same goods can be
`related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
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`The respective goods need only be “related in some manner and/or if the circumstances surrounding
`their marketing [be] 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).
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`Generally, the greater degree of similarity between the applied-for mark and the registered mark, the
`lesser the degree of similarity between the goods and/or services of the respective parties that is
`required to support a finding of likelihood of confusion. In re Davey Prods. Pty Ltd., 92 USPQ2d 1198,
`1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). In this comparison, the
`respective marks are substantially similar and therefore the goods need not be identical in this
`comparison in order to find a likelihood of confusion. Therefore, the goods and the marks in this
`comparison are substantially similar and registration remains refused.
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`AMENDMENT OF IDENTIFICATION OF GOODS – PARTIAL AS TO THE GOODS IDENTIFIED BELOW IN
`INTERNATIONAL CLASSES 6 AND 9 ONLY
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`The changes made by the applicant to the Identifications in the applicant’s Request for Reconsideration
`filing have been incorporated into the suggested revisions below.
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`International Class 6:
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`The wording “aluminum trim” in the Identification of Goods must be clarified because it is too broad and
`could include goods in other international classes. See TMEP §§1402.01, 1402.03.
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`In addition, the wording identified in bold below in the identification of goods is indefinite and must be
`clarified because the wording does not make clear the nature of the goods provided. See TMEP
`§1402.01.
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`Applicant may adopt the following identification, if accurate:
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`Aluminum trim for buildings (or add IC 12 if related to automotive trim); metal rails, namely, metal
`guiderails; metal bollards; metal posts; metal corrals for use as {indicate use, e.g. fencing}; metal
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`storage reels for wire, cable, metal ribbon, non-metal ribbon, flexible circuits, superconductors, film,
`magnetic tape, recording tape and testing strip material; metal spools for {indicate nature or purpose,
`e.g. for use with dispensing and storing metal wire, or for reeling flexible tubes of metal, etc.}.
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`International Class 9:
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`The wording identified below in bold in the Identification of Goods must be clarified because it may be
`too broad and could include goods in other international classes. See TMEP §§1402.01, 1402.03. In
`addition, the wording identified in bold below in the identification of goods may be indefinite and
`therefore must be clarified because the wording does not make clear the nature of the goods provided.
`See TMEP §1402.01.
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`Applicant may adopt the following identification, if accurate:
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`Electronic control systems and components for {indicate usage for or with, e.g. machines, engines},
`namely, electronic key-shaped and token-shaped portable data carrier systems comprised of central
`processing units (cpu), integrated circuits, and electronic non-volatile memory; Electronic systems and
`components, namely, electronic key receptacles and computer access terminals; Electronic mating
`receptacles used to interface electronic data carriers with microprocessors, microcontrollers and
`personal computers; Electronic mating unit in the nature of a data carrier reader and writer used to
`interface electronic data carriers with host microprocessors, programmable logic controllers (plcs),
`microcontrollers, or computers, with the capability to read and write information from/onto the data
`carrier based upon the data carrier's own electrical and command interface; Electronic evaluation
`modules, electronic control circuits and electronic interface units for use in interface tasks between
`electronic systems; Blank programmable electronic data carriers; Data carrier readers and writers used
`to interface with microprocessors, microcontrollers, and personal computers; Containers for
`commercial use to house semiconductors, integrated circuits, microprocessors and microcomputers
`(This identification is an International Class 20 good, however, if moved to International Class 20 the
`Identification must be amended to indicate that the goods are not of metal); Computer memory
`storage units for use in connection with {indicate specific IC 9 use, e.g. computer access control
`applications}; Electronic security control units for use in computer access control applications;
`Electronic motion sensitive switches; Electronic touch sensitive switches; Electrical switches; Electric
`push plate switches; Electric wall switches; Electric switches, namely, automatic door switches; Electric
`sensors, namely, automatic door sensors; Pressure sensitive mats in the nature of {indicate specific IC 9
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`good, e.g. Electronic sensing apparatus, namely, floor mats that sense the presence of a body
`thereon}; Door mats, namely, Automatic door mats {this is an international class 27 Identification.
`This items should be deleted or International Class 27 should be added to the application as indicated
`below}; Door mats, namely, door activation mats {this is an international class 27 Identification. This
`items should be deleted or International Class 27 should be added to the application as indicated
`below}; Door mats, namely, Revolving door mats {this is an international class 27 Identification. This
`items should be deleted or International Class 27 should be added to the application as indicated
`below}; Electronic safety mat, namely, {indicate specific good, e.g. a floor mat that …indicate purpose
`or function. This item also appears to be classified in International Class 27}; Switch mats, namely,
`{indicate nature of goods, e.g. floor mats that protect against injury in IC 27 or “electronic switch
`mats” in International Class 9}; Pressure sensitive security mats, namely, {indicate nature of goods, e.g.
`mats containing electronic sensing apparatus that sense the presence of a body thereon}; Pressure
`sensitive safety strips, namely, {indicate nature or purpose of goods, e.g. metal strips as parts of
`machines in IC 7, or lighting strips in IC 11, or flashing safety lights in IC 9}; Electronic industrial safety
`mat, namely, {indicate specific nature of mat, e.g. a mat containing electronic sensing apparatus that
`sense the presence of a body thereon}; Safety device which is fixed to the frame and door on the hinge
`or pivot side of a door which closes off the open area and expels fingers and hands from the entrapment
`area upon door closing preventing injury and amputation; Magnetic switches; Electronic transmitters
`and receivers for automatic door controls; Transmitters and receivers for sequencing automatic door
`openers; Electronic key fobs; Electric junction boxes; Electronic apparatus, namely, sonic wave detectors
`for access control and security systems; Laser detectors for access control and security systems;
`Magnetic object detectors for access control and security systems; Electronic keys, namely, {indicate
`nature of goods, e.g. electronic key cards} for access control and security systems; Electronic monitors
`for monitoring safety mats; Electronic control systems for {indicate for use with, e.g. machines,
`engines, etc.} that access control, security systems and safety controls; Electronic monitors for
`monitoring liquid levels in tanks; Electronic transmitters and receivers for tank monitoring systems;
`Electronic control systems for {indicate for use with, e.g. machines or engines} for monitoring liquid
`levels in tanks; Computer software for collection, editing, organizing, modifying, transmission, storage
`and sharing of data and information for tank monitoring systems; all of the foregoing excluding
`computer input devices, namely, computer mice and computer remote controls, adapters and
`components for personal digital assistants and computers, namely input/output and memory card
`adapters, computer cables, cable assemblies comprised of connectors, adapters and cables, cable
`connectors and electrical connectors, power protection devices, namely uninterruptible power supplies,
`computer signal repeaters and computer hubs for interfacing peripheral devices to computer ports.
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`In view of the foregoing, the requirement to amend the identification of goods is continued and
`remains final.
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`An applicant may only amend an identification to clarify or limit the services, but not to add to or
`broaden the scope of the services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
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`For assistance with identifying and classifying goods and/or services in trademark applications, please
`see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at
`http://tess2.uspto.gov/netahtml/tidm.html. See TMEP §1402.04.
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`MULTIPLE-CLASS APPLICATION REQUIREMENTS
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`The application identifies goods and/or services that are classified in at least 9 classes; however,
`applicant submitted a fee(s) sufficient for only 8 class(es). In a multiple-class application, a fee for each
`class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.
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`Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees
`already paid, or (2) submit the fees for each additional class.
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`For an application with more than one international class, called a “multiple-class application,” an
`applicant must meet all the requirements below for those international classes based on an intent to
`use the mark in commerce under Trademark Act Section 1(b):
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`(1)
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`LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS: Applicant must list the goods
`and/or services by international class.
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`(2)
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`PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application
`filing fee for each international class of goods and/or services not covered by the fee(s)
`already paid (confirm current fee information at
`http://www.uspto.gov/trademarks/tm_fee_info.jsp).
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`See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
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`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. §§2.62(c), 2.191;
`TMEP §§304.01-.02, 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.
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`/Catherine L. Tarcu/
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`Trademark Examining Attorney
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`Law Office 105
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`(571) 272-6120
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`Catherine.Tarcu@USPTO.GOV
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