UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/330154

 

The Office has reassigned this application to the undersigned examining attorney.  This letter responds to the applicant’s communication filed on July 31, 2002.

 

Refusal Under Section 2(d) – Likelihood of Confusion

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 2122640 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

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 (C.C.P.A. 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).  TMEP §§1207.01 et seq. 

 

The applicant seeks to register the mark PROLAB and design for the goods and services listed below.

 

The registrant has registered the mark PROLAB and design for “chemical anti-friction additives for use in engines and machinery; metallurgic auxiliary fluids for use with abrasives; chemical gas and diesel fuel conditioner additives; anti-rust oils industrial cleaners; car care products, namely, waxes, polish, and cleaning preparations for automobiles; anti-friction and synthetic oils for industrial use, and for commercial use in automobiles, motors, vehicles and boats; lubricants for use in automobile engines and industrial machinery; general purpose greases; biodegradable hydraulic oils for industrial markets, and for commercial use in heavy equipment, airplanes and agricultural machinery.”

 

The marks are highly similar because they are both comprised of the terms PRO and LAB and the design of an arrow and circle.  The goods are closely related because the y are comprised of automotive and industrial chemicals, lubricants and cleaning compounds.

 

The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

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 the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issue(s).

 

Ownership of Cited Registration

If the registered mark cited has been assigned to the applicant, the applicant is responsible for proving its ownership of that mark.  TMEP §812.01.  The applicant may record the assignment with the Assignment Branch of the Patent and Trademark Office.  Trademark Act Section 10, 15 U.S.C. §1060; 37 C.F.R. §3.25.  The applicant should then provide the examining attorney with the reel and frame numbers at which the assignment is recorded.  In the alternative, the applicant may submit evidence of the assignment of the mark to the applicant.  This evidence may consist of (1) documents evidencing the chain of title, or (2) an explanation, in an affidavit or supported by a declaration under 37 C.F.R. §2.20, of the chain of title (specifying each party in the chain, the nature of each conveyance and the relevant dates).  37 C.F.R. §3.73. 

 

Identification /Classification of the Goods/Services

The applicant originally identified its goods/services as follows:

 

Class 004: Oils, lubricants, greases, chemical products and cleaning products for industrial, commercial and residential use;

 

Class 042: Research, development, manufacturing, distribution and sales of oils, lubricants, greases, chemical products and cleaning products for industrial, commercial and residential use; consultation services and prescription of lubricants adapted to operation conditions.

 

In its response, the applicant has replaced the above identification of goods/services with the following:

 

Class 001:           Chemicals for industrial, commercial and residential use in all types of engines and all types of stationary and automotive machinery

 

Class 003:           Industrial cleaners, car care products namely, waxes, polish, rust proofing compound and cleaning preparations for vehicles and equipments

 

Class 004:           Lubricants for industrial, commercial and residential use in all types of engines and all types of stationary and automotive machinery; general purpose greases

 

Class 040:           Manufacture of lubricants, chemical products and cleaning products to order and specification of others

 

The wording shown above in bold in the identification of goods/services is unacceptable as indefinite and overly broad.  Accordingly, the requirement is continued and maintained. The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.  The applicant may adopt one or more of the following, if accurate:

 

·        Chemicals for use with automotive machinery and engines, namely, chemical additives for fuel treatment, chemical gasoline additives, chemical additives for use with internal combustion engine fuels, and chemical engine treatments and additives for engine oils, gasoline and diesel fuels, transmission fluids and cooling systems (International Class 1)

·        Car care products, namely rust proofing compounds in the nature of coatings (International Class 2)

·        Car care products, namely, waxes, polish and  rust removing compounds (International Class 3)

·        All purpose cleaners for industrial use (International Class 3)

·        Car cleaning compounds (International Class 3)

·        Industrial cleaning compounds for use with [INDICATE surface or field/type of equipment, e.g., ovens, oil drilling equipment, etc.] (International Class 3)

·        Industrial lubricants (International Class 4)

·        All purpose lubricants (International Class 4)

·        Automotive lubricants (International Class 4)

·        Lubricants for industrial machinery (International Class 4)

·        Graphite lubricants (International Class 4)

·        Manufacture of lubricants, cleaning compounds and chemicals to the order and specification of others (International Class 40)

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

The application identifies goods/services that may be classified in several International Classes.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01. 

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods/services by International Class with the classes listed in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each International Class of goods/services not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date.  

 

Informational Notice

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

Tracy L. Fletcher

Examining Attorney

Law Office 115

Phone:  (703) 308-9115 ext. 205

Facsimile:  (703) 872-9875

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.