UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/343665
APPLICANT: QUADRO ENGINEERING
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: QUADRO
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CORRESPONDENT’S REFERENCE/DOCKET NO: K6000710US
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/343665
The application has been reassigned to the undersigned examining attorney.
Action on the current application was suspended pending the disposition of earlier filed Application Serial No. 76346227 which has matured to registration. Thus, the applicant must address the following issues.
Section 2(d) - Likelihood of Confusion Refusal
Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2892325. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration.
Trademark Act Section 2(d) bars registration where an applied-for mark so resembles a registered mark that it is likely, when applied to the goods and/or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods and/or services. TMEP §1207.01. 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 consider in determining whether there is a likelihood of confusion. Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression, and the relatedness of the goods and/or services. The overriding concern is to prevent buyer confusion as to the source of the goods and/or services. In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974).
When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services. Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion. In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP §1207.01(c)(ii). The literal portions of both marks are nearly identical in sound and meaning. The addition of the design element does not obviate the similarity between the marks in this case. In re Shell Oil Company, 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975); TMEP §1207.01(c)(ii).
The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. Instead, they need only be related in some manner, or the conditions surrounding their marketing be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods and/or services come from a common source. On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).
A determination of whether there is a likelihood of confusion is made solely on the basis of the goods and/or services identified in the application and registration, without limitations or restrictions that are not reflected therein. In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). If the cited registration describes the goods and/or services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the registration encompasses all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639 (TTAB 1981); TMEP §1207.01(a)(iii). The registrant’s mechanized mixing equipment which has not been limited to specific uses. The wording “such as” in the registrant’s identification of goods is merely illustrative language which does not limit the uses of the goods. The applicant’s machines are also used for mixing purposes. Thus, the parties’ machinery may be complementary items used by similar consumers, for similar purposes or encountered in the same channels of trade.
Although the trademark examining attorney has refused registration, 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(s) to register, then applicant must also respond to the following requirement(s).
An assignment of the mark has been filed with the Assignment Division. The assignment records reflect that applicant assignee is a limited partnership of Canada. Applicant must specify the names and the national citizenship (for individuals) or the U.S. state or foreign country of organization or incorporation of the general partners, as appropriate. 37 C.F.R. §2.32(a)(3)(iii); TMEP §§803.03(b) and 803.04.
Also, for the assignee applicant’s address, please set forth the foreign country. 37 C.F.R. §2.32(a)(4).
Applicant must submit an English translation of all foreign wording in the mark. 37 C.F.R. §2.61(b); TMEP §809. In the present case, the wording “QUADRO” needs translating for the record. The following translation statement is suggested: “The English translation of the word QUADRO in the mark is canvas.” See attached.
Applicant must explain the purpose of the lining pattern that appears in the drawing of the mark because it is not clear whether the lining pattern is a feature of the mark, merely intended to indicate shading, or intended to indicate color. See TMEP §808.01(d).
(1) If the lining pattern in the drawing is a feature of the mark, then applicant must submit the following statement: “The lining shown in the drawing is a feature of the mark.”
(2) If the lining pattern indicates shading, then applicant must submit the following statement: “The lining shown in the mark is to indicate shading.”
(3) If the lining pattern in the drawing is to indicate color, then applicant must do one of the following:
(a) submit a statement that “the color(s) blue, white and black are claimed as a feature of the mark,” and a separate statement describing where the colors appear in the mark, i.e., “The circle is white with a blue swirl and a small black dot in the circle, the square is black and the letters are black.;” or
(b) submit a color drawing with a statement that “the color(s) blue, white and black are claimed as a feature of the mark” and a separate statement describing where the colors appear in the mark, i.e., “The circle is white with a blue swirl and a small black dot in the circle, the square is black and the letters are black.” 37 C.F.R. §2.52(b)(1); TMEP §§807.07 et seq.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/Mary Boagni/
Examining Attorney
Law Office 114
571-272-9130
Law Office 114 fax: 571-273-9114
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm