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:

THIS IS A FINAL ACTION.

INTERNATIONAL REGISTRATION NO. 1166512

On January 22, 2014, action on this application was suspended pending the disposition of U.S. Application Serial No. 85745677. The referenced pending application has abandoned and is no longer a potential bar to the registration of applicant’s mark. The citations to U.S. Registration Nos. 3080115, 3080116 , 3253410, 3704025, and 4326288 are withdrawn.

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration Nos. 3306627 and 3405683. See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).

The requirement for an acceptable identification is now made FINAL for the reasons set forth below. 37 C.F.R. §2.64(a).

Trademark Section 2(d) Likelihood of Confusion Refusal to Register

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3306627, and 3405683. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. Copies of the referenced registrations were provided with the office action issued on July 31, 2013.

The registered marks are:

U.S. Reg. No.

Mark

Relevant Goods

Owner

3306627

HYUNDAI in standard characters

Internal combustion engines for machine operation and replacement parts therefor; Power-operated lifting and moving equipment, namely, pipe layers, fork lifts, telehandlers, and lifts

Hyundai Construction Equipment U.S.A., Inc.

(Illinois Corp)

3405683

HYUNDAI HEAVY INDUSTRIES CO., LTD with a triangle design (“HEAVY INDUSTRIES CO., LTD.” disclaimed)

Engines for air cushion vehicles; belts for motors and engines; catalytic converters for motors and engines; crank cases for machines, motors and engines; cylinder heads for engines; cylinders for motors and engines; exhausts for motors and engines; fuel conversion apparatus for internal combustion engines; glow plugs for diesel engines; igniting devices for internal combustion engines; igniting magnetos for engines; fuel injectors for engines; exhaust manifolds for engines; mufflers for motors and engines; pistons for engines; radiators cooling for motors and engines; sparking plugs for internal combustion engines; superchargers for automobiles; alternators for land vehicles; current generators; electric motors other than for land vehicles; diesel engines for ships or aircrafts; diesel engines other than for vehicles

Hyundai Heavy Industries Co., Ltd. (Corporation, Republic of Korea)

The applied-for mark is HYUNDAI KEFICO in stylized form for “Control mechanisms for engines, namely, exhaust system sensors for internal combustion engines; injectors of fuel; high pressure fuel pumps; exhaust manifold for internal combustion engines; valves being parts of machines; electronic brakes for machines; hydraulic valve actuators; heat exchangers being parts of machines; fuel pumps for land vehicles; air compressors for vehicles; intake manifolds for land vehicles.”

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential 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). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

Comparison of the Marks

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v). Similarity in any one of these elements may be sufficient to find the marks 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).

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.

The identical term “HYUNDAI” is the first part of the applied-for mark and the mark in U.S. Registration No. 3405683, and the only term in U.S. Registration No. 3306627. 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).

The additional wording “HEAVY INDUSTRIES CO., LTD.” in U.S. Registration No. 3405683 is disclaimed. Disclaimed matter that is descriptive of or generic for an applicant’s goods and/or services is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752 ; TMEP §1207.01(b)(viii), (c)(ii).

Relatedness of the Goods

With respect to applicant’s and registrant’s goods and/or services, the question of likelihood of confusion is determined based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-70, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).

Absent restrictions in an application and/or registration, the identified goods and/or services 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)). Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).

In this case, the wording “injectors of fuel” in the application could include the “fuel injectors for engines” in U.S. Registration No. 3405683. See attached entry from the American Heritage® Dictionary of the English Language showing that “fuel injection” is “any of several methods or mechanical systems by which a fuel is reduced to a fine spray and injected directly into the cylinders of an internal-combustion engine.” U.S. Registration No. 3405683 also includes “exhausts for motors and engines” and “exhaust manifolds for engines,” which could include the “exhaust manifold for internal combustion engines” in the application, and “superchargers for automobiles” which could include the air compressors in the application. See attached entry from the American Heritage® Dictionary of the English Language showing a supercharger is a compressor for supplying air under high pressure to an internal combustion engine. Further, applicant’s heat exchangers could include the motor and engine radiators in U.S. Registration No. 3405683. See attached entry from the American Heritage® Dictionary of the English Language showing a radiators is a type of heat exchanger.

The “internal combustion engines for machine operation and replacement parts therefor” in U.S. Registration No. 3306627 could also include the fuel injectors, exhaust and intake manifolds, and fu in the application. See attached entries from the American Heritage® Dictionary of the English Language showing parts of combustion engines including fuel injectors and intake and exhaust valves and “manifold” meaning a connecting pipe or chamber.

Unity of Control Not Established

Applicant indicates that it has a legal relationship with the registrant(s) in the cited registration(s). However, a legal relationship between the parties is insufficient to overcome a likelihood of confusion unless the parties constitute a “single source.” That is, the legal relationship between the parties must exhibit a “unity of control” over the nature and quality of the goods and/or services in connection with which the trademarks and/or service marks are used, and a “unity of control” over the use of the trademarks and/or service marks. See In re Wella A.G., 5 USPQ2d 1359, 1361 (TTAB 1987); see also TMEP §1201.07.

Unity of control is presumed in instances where, absent contradictory evidence, one party owns (1) all of another entity, or (2) substantially all of another entity and asserts control over the activities of that other entity. See TMEP §1201.07(b)(i)-(ii). Such ownership is established, for example, when one party owns all or substantially all of the stock of another or when one party is a wholly owned subsidiary of another. See In re Wella A.G., 5 USPQ2d at 1361; TMEP §1201.07(b)(i)-(ii). It is additionally presumed when, absent contradictory evidence, applicant is shown in USPTO records as a joint owner of the cited registration, or the owner of the registration is listed as a joint owner of the application, and applicant submits a written statement asserting control over the use of the mark by virtue of joint ownership. TMEP §1201.07(b)(ii).

However, in most other situations, additional evidence is required to show unity of control. For example, if the parties are sister corporations or if the parties share certain stockholders, directors or officers in common, additional evidence must be provided to show how the parties constitute a single source. See In re Pharmacia, Inc., 2 USPQ2d 1883, 1884 (TTAB 1987); TMEP §1201.07(b)(iii).

Therefore, applicant must provide a written statement explaining the nature of the legal relationship between the parties. In addition, if neither party owns all or substantially all of the other party, and USPTO records do not show their joint ownership of the application or cited registration, applicant must provide a detailed written explanation and documentary evidence showing the parties’ “unity of control” over the nature and quality of the goods and/or services in connection with which the trademarks and/or service marks are used, and the parties’ “unity of control” over the use of the trademarks and/or service marks. See TMEP §1201.07(b)(i)-(iii). This statement and, if necessary, explanation must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20. TMEP §1201.07(b)(ii)-(iii); see 37 C.F.R. §2.193(e)(1). However, if one party owns all of the other entity, and there is no contradictory evidence of record, the written statement need not be verified. TMEP §1201.07(b)(i).

Conclusion

Given the similarity of the marks and the relatedness of the goods, consumers are likely to confuse the source of the goods set forth in the application and the registration. Accordingly, registration of the applied-for mark is refused under Section 2(d) of the Trademark Act.

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

Clarification of Identification of Goods Required

The wording “Control mechanisms for engines, namely, exhaust system sensors for internal combustion engines” in the identification of goods is too broad and must be clarified because it could include sensors in International Class 9. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. To be in International Class 7, the goods must be a part of an internal combustion engine.

The wording “high pressure fuel pumps” and “fuel pumps” in the identification of goods is indefinite and must be clarified because the use of the goods must be specified, e.g., for service stations. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another. 37 C.F.R. §2.85(d); see TMEP §§1402.07(a), 1904.02(c).

Therefore, any modification to this wording must identify goods in International Class 7, the classification specified in the application for these goods.

Sample Amended Identification

Applicant may adopt the following identification, if accurate:

International Class 7: Control mechanisms for engines, namely, exhaust system sensors being parts of internal combustion engines; injectors of fuel; high pressure fuel pumps, namely, _____ [specify type, e.g., fuel pumps for land vehicles]; exhaust manifold for internal combustion engines; valves being parts of machines; electronic brakes for machines; hydraulic valve actuators; heat exchangers being parts of machines; fuel pumps for land vehicles; air compressors for vehicles; intake manifolds for land vehicles

An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §1904.02(c)(iv). In an application filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). If an applicant amends an identification to a class other than that assigned by the International Bureau, the amendment will not be accepted because it will exceed the scope and those goods and/or services will no longer have a basis for registration under U.S. law. TMEP §§1402.01(c), 1904.02(c).

In addition, in a Section 66(a) application, an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c).

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 at http://tess2.uspto.gov/netahtml/tidm.html. See TMEP §1402.04.

Final Action Response Guidelines

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:

(1) A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.

(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.

37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).

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(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.

/April K. Roach/

April K. Roach

Trademark Examining Attorney

Law Office 115

(571) 272-1092

april.roach@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.