To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Panasonic Corporation of North America (ptodocket@arelaw.com)
`
`U.S. TRADEMARK APPLICATION NO. 86247012 - 3E - 55210/827
`
`5/19/2014 1:46:22 PM
`
`ECOM108@USPTO.GOV
`
`Attachment - 1
`Attachment - 2
`Attachment - 3
`Attachment - 4
`Attachment - 5
`Attachment - 6
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`      U.S. APPLICATION SERIAL NO. 86247012
`           
`     MARK: 3E
`
`*86247012*
`
`CLICK HERE TO RESPOND TO THIS LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`    CORRESPONDENT ADDRESS:
`     
`      HOLLY PEKOWSKY, ESQ.
`     
`      AMSTER, ROTHSTEIN & EBENSTEIN LLP
`   
`90 PARK AVE
`       
`   
`        NEW YORK, NY 10016-1301
`            
`
`    55210/827
`
`    CORRESPONDENT E-MAIL ADDRESS:        
`
`    ptodocket@arelaw.com
`
`       APPLICANT: Panasonic Corporation of North America
`        CORRESPONDENT’S REFERENCE/DOCKET NO :         
`   
`
`OFFICE ACTION
`
`STRICT DEADLINE TO RESPOND TO THIS LETTER
`TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S
`COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
`
`ISSUE/MAILING DATE: 5/19/2014
`
`The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to
`the issue below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
`
`Mark is Likely to Cause Confusion
`
`The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when
`used on or in connection with the identified goods, so resembles the mark in U.S. Registration Nos. 3566853 and 3995876 as to be likely to
`cause confusion, or to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registrations.
`
`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 of 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.  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
`
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`567.
`
`The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining
`attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de
`Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Second, the examining attorney must compare the goods or services to
`determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG,
`218 USPQ 823 (TTAB 1983);  In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978);   Guardian Products Co., v.
`Scott Paper Co., 200 USPQ 738 (TTAB 1978).
`
`Analysis of Applicant’s Mark and Registered Mark
`
`First, a comparison of the respective marks show that they are comprised either in whole or significant part of the term “3E.”   The mere deletion
`of wording from a registered mark may not be sufficient to overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94
`USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l , 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  Applicant’s mark does not
`create a distinct commercial impression because it contains the same common wording as the registered mark, and there is no other wording to
`distinguish it from the registered mark.  Accordingly, the applicant’s mark, “3E,” is similar in sound, appearance, connotation and commercial
`impression to Registration No. 3566853’s mark “3E TECHNOLOGIES INTERNATIONAL” and Registration No. 3995876’s mark “3E
`ECO EFFICIENCY EVALUATIONS.”    Similarity in any one of these elements alone is sufficient to find a likelihood of confusion.  
`In re
`Mack, 197 USPQ 755 (TTAB 1977).
`
`It is well settled that in some circumstances, it is appropriate to recognize that one component of a particular mark may, for some reason, have
`more significance than other components in determining the commercial impression which is generated by the mark.  In re National Data Corp., 
`753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).  Although the determination of whether or not confusion is likely must be based on a
`comparison of the marks in their entireties, the dominance of such a significant element must be taken into account in resolving this issue. 
`Ceccato v. Manifattura Lane Gaetano Morzotto Figli S.p.A., 32 USPQ 1192 (TTAB 1994).  Disclaimed matter is typically less significant or less
`dominant.
`
`The registrants’ marks are “3E TECHNOLOGIES INTERNATIONAL” and 3E ECO EFFICIENCY EVALUATIONS.”   In the comparison
`above,
`the marks were viewed and considered as a whole. “TECHNOLOGIES INTERNATIONAL” and “ECO EFFICIENCY
`EVALUATIONS,” however, is descriptive of the goods and is of less trademark significance than “3E.”
`
`When comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are
`sufficiently similar in their entireties that confusion as to the source of the goods and/or services offered under applicant’s and registrant’s
`marks is likely to result.  Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed.
`Cir. 2012); Edom Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012); TMEP §1207.01(b).  The focus is on the recollection of the
`average purchaser, who normally retains a general rather than specific impression of trademarks.  L’Oreal S.A. v. Marcon, 102 USPQ2d 1434,
`1438 (TTAB 2012); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).
`
`Analysis of Goods
`
`Second, a comparison of the applicant’s goods, “laptops, tablets and computers,” to the registrant’s goods shows the relationship between
`them.  Registration No. 399576’s mark is for computers in the fields of ecological evaluation, surveying and engineering.  Registration No.
`
`3566853’s mark is for goods including computers.   The overlapping identifications of computers evidence the relationship.  
`
`The examining attorney must determine whether there is a likelihood of confusion on the basis of the goods identified in the application and
`registration.  If the application or cited registration describes the goods broadly and there are no limitations as to their nature, type, channels of
`trade or classes of purchasers, it is presumed that the application and registration encompass all goods of the type described, that they move in all
`normal channels of trade, and that they are available to all potential customers. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811
`F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co., v. Johnson Publishing Co., Inc., 473 F.2d  901, 177 USPQ 76 (CCPA
`1973); In re Elbaum, 211 USPQ 639 (TTAB 1981).  The applicant’s identification of laptops, tablets and computers is seen to include such
`goods used for ecological evaluation, surveying and engineering.
`
`It should be noted that where the goods of an applicant and registrant are identical or virtually identical, the degree of similarity between the
`marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods.  See In re Viterra Inc., 671 F.3d
`1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (citing Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877, 23
`USPQ2d 1698, 1701 (Fed. Cir. 1992)); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); TMEP
`§1207.01(b).
`
`The examining attorney must also consider any goods in the registrant's normal fields of expansion to determine whether the registrant's goods
`are related to the applicant's identified goods under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  Accordingly, the
`mark is likely to cause consumer confusion as to source.
`
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`

`Other Considerations
`
`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.  If applicant chooses to respond to the refusal to register, the following issue must also be addressed.
`
`The Identification of Goods is Indefinite
`
`The identification of goods is indefinite and must be clarified because it is unclear from the current wording exactly what goods are used in
`conjunction with the mark.  See TMEP §1402.01.  In particular, “tablets” must be specified as “tablet computers.”   Applicant may adopt the
`
`following identification, if accurate (suggested wording appears italicized print):              
`
`Laptops, tablet computers and computers in Class 9.  TMEP Section 1402.01.
`
`An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not
`
`permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.  
`
`For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of
`Acceptable Identifications of Goods and Services at http://tess2.uspto.gov/netahtml/tidm.html.  See TMEP §1402.04.
`
`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 §§304.01-.02, 709.04-.05.  Further,
`although the trademark examining attorney may provide additional explanation pertaining to the refusal and/or requirement 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.
`
`/Jason F. Turner/
`Jason F. Turner
`Law Office 108
`(571) 272-9353
`jason.turner@uspto.gov
`
`TO RESPOND TO THIS LETTER:   Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp.   Please wait 48-72 hours from the
`issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. 
`For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned
`trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to
`this Office action by e-mail.
`
`All informal e-mail communications relevant to this application will be placed in the official application record.
`
`WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an
`applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the
`
`response.  
`PERIODICALLY CHECK THE STATUS OF THE APPLICATION:   To ensure that applicant does not miss crucial deadlines or official
`notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at
`http://tsdr.uspto.gov/.   Please keep a copy of the TSDR status screen.   If the status shows no change for more than six months, contact the
`Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.   For more information on checking
`status, see http://www.uspto.gov/trademarks/process/status/.
`
`TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
`
` 
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`Print: May 19, 2014
`
`7744-14-08
`
`DESIGN MARK
`
`Serial Number
`TT441408
`
`Status
`REGISTERED
`
`Word Mark
`3E TECHNOLOGIES INTERNATIONAL
`
`Standard Character Mark
`No
`
`Registration Number
`3566853
`
`.1.
`
`Secure wireless communication infrastructure, devices, and systems,
`namely, secure wireless access points, bridges, repeaters, gateways,
`routers. and servers; secure wireless network devices and data
`terminals: portable data processing devices, namely, computers and
`related wireless communication software to operate wireless devices;
`data processing circuits and associated firmware for implementing
`wireless encryption protocols; modems and network cards to enable
`portable computing devices to access a wireless network; and secure
`communication and encryption software for wireless communication
`devices to enable authentication and secure information exchange.
`First Use: 2008304/07. First Use In Commerce: 2008H04HOT.
`
`Date Registered
`2009x01x21
`
`Type of Mark
`TRADEMARK
`
`Register
`PRINCIPAL
`
`Mark Drawing Code
`[5] WORDS, LETTERS, ANDfOR NUMBERS IN STYLIZED FORM
`
`Owner
`3e Technologies International, Inc. CORPORATION MARYLAND 5th Floor
`9115 Key WEst Avenue Rockville MARYLAND 20850
`
`GoodsfServiees
`Class Status -- ACTIVE.
`
`IC 009.
`
`US
`
`021 023 026 036 038.
`
`G & 8:
`
`Disclaimer Statement
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "TECHNOLOGIES
`INTERNATIONAL" APART FROM THE MARK AS SHOWN.
`
`

`

`Print: May 19, 2014
`
`7744-14-08
`
`Calms Claimed
`The colorls] red and blue isfare claimed as a feature of the mark.
`
`Filing Date
`2008H04HUT
`
`Examining Attorney
`BLANDU, FLORENTINA
`
`litttnmeglr of Record
`
`Description of Mark
`The mark consists of large red letters for "Be" and smaller blue
`letters for "Technologies International" shown as a superscript of
`"Be". The "Be" is outlined in blue.
`
`Dyan M. House
`
`

`

`Technul
`
`Intemattilglllal
`
`' es
`
`
`
`
`
`

`

`Print: May 19, 2014
`
`79095559
`
`DESIGN MARK
`
`serial Number
`T9085559
`
`Status
`REGISTERED
`
`Word Mark
`3 E ECC EFFICIENCY EVALUATIONS
`
`Standard Character Mark
`No
`
`Registration Number
`3995816
`
`Date Registered
`zollxaixlg
`
`Type of Mark
`TRADEMARK; SERVICE MARK
`
`Register
`PRINCIPAL
`
`
`
`management and organization consultancy in the fields of ecological
`evaluation, surveying and engineering; commercial and industrial
`management assistance relating to ecological evaluations, surveying
`and engineering; business management assistance to industrial or
`commercial companies relating to ecological evaluations, surveying and
`engineering; efficiency experts in the fields of ecological
`evaluation, surveying and engineering; conducting marketing studies
`and research in the fields of ecological evaluation, surveying and
`engineering.
`
`Mark Drawing Code
`[3] DESIGN PLUS woRDS, LETTERS ANDXOR NUMBERS
`
`Owner
`RHODIA_OPERATIONS société par actions simplifiée [sas] FRANCE 40 rue
`de la Haie-Coq F-93306 AUBERVILLIERS FRANCE
`
`GoodsfServiees
`Class Status -- ACTIVE.
`
`10 009.
`
`US
`
`021 023 026 036 038.
`
`G & 8:
`
`transmission or reproduction of sound or
`Apparatus for recording,
`images, calculating machines, data processing equipment and computers
`in the fields of ecological evaluation, surveying and engineering.
`
`GOOdSJ'SEWiBBS
`Class Status -- ACTIVE.
`
`10 035.
`
`US
`
`100 101 102.
`
`G a 3: Business
`
`

`

`Disclaimer Statement
`NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "ECO EFFICIENCY
`EVALUATIONS" APART FROM THE MARK AS SHOWN.
`
`Description of Mark
`The mark consists of the wording "3 E ECO EFFICIENCY EVALUATIONS" with
`the number "3" in green,
`the letter "E" in orange,
`the wording "ECO
`EFFICIENCY EVALUATIONS"
`in blue, all encompassed by an oval shaded in
`yellow and gray.
`
`Colors Claimed
`The colorls] green, yellow, blue, orange and gray isHare claimed as a
`feature of the mark.
`
`Filing Date
`2010x06x01
`
`Examining Attorney
`CALLAGI—IAN BRIAN
`
`Attorneyr of Record
`
`Print: May 19, 2014
`
`79095559
`
`Priority Date
`ZUUBHlZHUB
`
`GoodSIServices
`G & S: Evaluations,
`100 101.
`US
`IC 042.
`Class Status -- ACTIVE.
`estimates, research, and reports in the fields of science and
`technology, namely, ecological evaluation, surveying and engineering;
`design and development of computer hardware and software relating to
`ecological evaluations, surveying and engineering;
`technical project
`studies in the fields of ecological evaluation, surveying and
`engineering; surveying.
`
`Frank J. Colucci
`
`

`

`
`
`

`

`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Panasonic Corporation of North America (ptodocket@arelaw.com)
`
`U.S. TRADEMARK APPLICATION NO. 86247012 - 3E - 55210/827
`
`5/19/2014 1:46:23 PM
`
`ECOM108@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`
`IMPORTANT NOTICE REGARDING YOUR
`U.S. TRADEMARK APPLICATION
`
`USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED
`ON 5/19/2014 FOR U.S. APPLICATION SERIAL NO. 86247012
`
`Please follow the instructions below:
`
`(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov, enter the U.S. application serial number, and click on
`“Documents.”
`
`The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24
`hours of this e-mail notification.
`
`(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable
`response time period.  Your response deadline will be calculated from 5/19/2014 (or sooner if specified in the Office action).  For information
`regarding response time periods, see http://www.uspto.gov/trademarks/process/status/responsetime.jsp.
`
`Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as
`responses to Office actions. 
`Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System
`(TEAS) response form located at http://www.uspto.gov/trademarks/teas/response_forms.jsp.
`
`(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For
`technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail
`TSDR@uspto.gov.
`
`WARNING
`
`Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For
`more information regarding abandonment, see http://www.uspto.gov/trademarks/basics/abandon.jsp.
`
`PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are
`using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that
`closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay
`
`“fees.”   
`
`Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document
`from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States
`Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”   For more information on how to handle
`private company solicitations, see http://www.uspto.gov/trademarks/solicitation_warnings.jsp.
`
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