To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Panasonic Corporation of North America (pctrademarks@perkinscoie.com)
`
`U.S. TRADEMARK APPLICATION NO. 87807422 - ACCUPULSE - 118383-4000
`
`4/5/2018 10:22:19 AM
`
`ECOM115@USPTO.GOV
`
`Attachments:
`
`Attachment - 1
`Attachment - 2
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`U.S. APPLICATION
`SERIAL NO. 87807422
`
`           
`
`MARK: ACCUPULSE
`
`CORRESPONDENT
`ADDRESS:
`  
`       THOMAS L. HOLT
`  
`       PERKINS COIE LLP
`         1201 THIRD AVENUE,
`SUITE 4900
`           SEATTLE, WA 98101
`    
`   
`APPLICANT: Panasonic
`Corporation of North America
`
`    
`
`*87807422*
`
`CLICK HERE TO RESPOND TO THIS
`LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`VIEW YOUR APPLICATION FILE
`
`ATTORNEY DOCKET NO:
`118383-4000
`
`   
`
`CORRESPONDENT E-
`
`MAIL ADDRESS:       
`
`pctrademarks@perkinscoie.com
`
`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. A RESPONSE
`TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE
`MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
`
`ISSUE/MAILING DATE: 4/5/2018
`
`The undersigned trademark examining attorney has reviewed the referenced application. 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.
`
`Registration Refused – Likelihood Of Confusion
`
`This refusal applies to Class 7.
`
`Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3261984. Trademark
`Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
`
`Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be
`
`confused, 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).  
`
`Determining likelihood of confusion is made on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co.,
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`476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir.
`2017). However, “[n]ot all of the [ du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be
`considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re
`
`Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).  
`
`The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].” 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)); see TMEP §1207.01.  
`
`The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from
`adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690
`(Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP
`§1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper
`Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
`
`Applicant’s proposed mark is ACCUPULSE for, as currently worded, power tools, namely, cordless power tools, air tools, electric tools, torque
`controlled tools; assembly tools; error proofing; screwdrivers, drill-drivers, hammer drill-drivers, multi-impact drill-drivers, impact drivers,
`impact wrenches, rotary hammers, circular saws, reciprocating saws, and jig saws.
`
`The registered mark is ACCU-PULSE for identifiable feature of a welding machine, namely, software used to control the weld arc in the field of
`gas metal arc welding.
`
`The marks are nearly identical, varying only by the hyphen in the registered mark. Where the marks of the respective parties are identical or
`virtually identical, as in this case, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion
`declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687,
`1689 (Fed. Cir. 1993)), aff’d , 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).
`
`The goods are nevertheless very closely related in that applicant’s identification as currently worded is broad enough to cover welding tools.
`Therefore, applicant’s goods would be used with the registered goods. 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] 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).
`
`Consequently, there is a likelihood of confusion, and refusal to register pursuant to Section 2(d) is appropriate in this case. Although applicant’s
`mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
`
`Applicant Must Amend The Identification
`
`The identification is indefinite and overly broad and must be amended as shown below to clarify the nature of the goods and services and to
`properly classify them. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. In particular, power tools are classified in Class 7, while hand
`tools are classified in Class 8. It is unclear what is meant by “error proofing” but it appears to be classified in Class 41.
`
`Applicant may adopt the following identification, if accurate:  
`
`“Cordless power tools, namely, {specify goods, e.g., cordless power-driven wrenches}; air-powered tools, namely, {specify goods, e.g.,
`air drills}; electric power tools, namely, {specify goods, e.g., electric arc welders and electric chain saws}; torque controlled power tools;
`namely, {specify goods, e.g., torque controlled power screwdrivers}; assembly power tools namely, {specify goods, e.g., electric welding
`guns}; power-operated screwdrivers; power-operated drill-drivers; power-operated hammer drill-drivers; power-operated multi-impact
`drill-drivers; power-operated impact drivers; impact wrenches; electric rotary hammers; circular saws; reciprocating power-driven saws;
`power-operated jig saws,” in International Class 7;
`
`“Hand tools, namely, screwdrivers; hand-operated drill-drivers; hand-operated hammer drill-drivers; hand-operated multi-impact drill-
`drivers; hand-operated impact drivers; hand-operated jig saws,” in International Class 8; and
`
`“Error proofing, namely, {specify services, e.g., copy editing and proofreading of manuscripts},” in International Class 41.
`
`Applicant’s goods and 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 or services or add goods or
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`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 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 or services will further limit scope, and once
`goods or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
`
`For assistance with identification and classification in trademark applications, please consult the USPTO’s online searchable U.S. Acceptable
`Identification of Goods and Services Manual. See TMEP §1402.04.
`
`Multi-Class Application Requirements
`
`The application identifies goods and services in more than one international class. Therefore, applicant must satisfy all the requirements below
`for each international class based on Trademark Act Section 1(b):
`
`(1)      
`
`(2)      
`
`List the goods and services by their international class number in consecutive numerical order, starting with the lowest numbered
`class.
`
`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 and services that are classified in at least three classes. However, applicant submitted a fee sufficient for
`only one class. 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 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
`
`See an overview of the requirements for a multiple-class application and how to satisfy the requirements online using the Trademark Electronic
`Application System (TEAS) form.
`
`TEAS RF Application Requirements
`
`TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL
`REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application
`online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses
`to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid email correspondence address;
`and (3) agree to receive correspondence from the USPTO by email throughout the prosecution of the application. See 37 C.F.R. §§2.22(b),
`2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of
`$125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations,
`TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or email without
`incurring this additional fee.
`
`Applicant is invited to contact the assigned examining attorney with any questions regarding this action.
`
`/Katherine S. Chang/
`Trademark Examining Attorney
`Law Office 115
`571-270-1528
`katherine.chang@uspto.gov
`
`TO RESPOND: Go to response forms and choose option #1. 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
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`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 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: Apr 5, 2013
`
`78434-392
`
`DESIGN MARK
`
`serial Number
`T8434892
`
`Status
`REGISTERED AND RENEWED
`
`Word Mark
`ACCU—PULSE
`
`Standard Character Mark
`Yes
`
`Registration Number
`3261984
`
`Date Registered
`zeaTxDTxla
`
`Type of Mark
`TRADEMARK
`
`Register
`PRINCIPAL
`
`Mark Drawing Code
`[4
`STANDARD CHARACTER MARK
`
`
`
`Owner
`Illinois Tool Wbrke Inc. CORPORATION DELAWARE 155 Herlem.Avenue
`Glenview ILLINOIS 60025
`
`GoodsfServioes
`Claee Statue —— ACTIVE.
`
`10 009.
`
`US
`
`021 023 026 036 038.
`
`G a S:
`
`identifiable feature of a welding machine, namely, software used to
`control the weld are in the field of gas metal arc welding. First
`Use: 1993f04f00. First Use In Commerce: 1993f04f00.
`
`Filing Date
`2004:”06r’14
`
`Examining Attorney
`DUKOVCI C .
`JOANNA
`
`.i-‘ntttorneg‘pr of Record
`Eligio C. Pimentel
`
`

`

`ACCU-PULSE
`
`

`

`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Panasonic Corporation of North America (pctrademarks@perkinscoie.com)
`
`U.S. TRADEMARK APPLICATION NO. 87807422 - ACCUPULSE - 118383-4000
`
`4/5/2018 10:22:22 AM
`
`ECOM115@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 4/5/2018 FOR U.S. APPLICATION SERIAL NO. 87807422
`
`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 4/5/2018 (or sooner if specified in the Office action).  A response
`transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the
`response period.   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 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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