Offc Action Outgoing

HYDROTEC

DAK Americas, L.L.C.

Offc Action Outgoing

UNITED STATES DEPARTMENT OF COMMERCE

UNITED STATES PATENT AND TRADEMARK OFFICE

 

    SERIAL NO: 76/374887

 

    APPLICANT:                          DAK Americas, L.L.C.

 

 

        

 

    CORRESPONDENT ADDRESS:

    E. THOMAS WATSON

    PARKER POE ADAMS & BERNSTEIN, LLP

    THREE FIRST UNION CENTER

    401 SOUTH TRYON STREET SUITE 3000

    CHARLOTTE NC 28202

RETURN ADDRESS: 

Commissioner for Trademarks

2900 Crystal Drive

Arlington, VA 22202-3513

ecom110@uspto.gov

 

 

 

    MARK:          HYDROTEC

 

 

 

    CORRESPONDENT’S REFERENCE/DOCKET NO:   N/A

 

    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.

 

 

 

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  76/374887

 

The Office has reassigned this application to the undersigned examining attorney.

 

This letter responds to the applicant’s communication filed on 2 January 2003.

 

Section 2(d) Refusal -- Likelihood Of Confusion

 

As U.S. Application No. 76-082829 has matured into a registration, the following refusal is made.  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 the identified goods, is likely to be confused with the registered mark in U.S. Registration No. 2606634.  TMEP section 1207.  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 (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).

 

The examining attorney has determined that contemporaneous use of the marks HYDROTEC (and design) and HYDRO-TEC (and design), as applied to fibers and yarn and fabric, respectively, would be likely to cause confusion for the following reasons.

 

The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the principal factors to be considered in determining whether there is a likelihood of confusion under Section 2(d).  Any one of the factors listed may be dominant in any given case, depending upon the evidence of record.  In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods, and similarity of trade channels of the goods.

 

A.  The Marks

 

The examining attorney must look at the marks in their entireties under Section 2(d).  Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985);  Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).

 

The literal portions of both marks are nearly identical in appearance, sound and meaning.  The addition of the design element does not obviate the similarity between the marks.  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(b)(viii) and 1207.01(c)(ii). 

 

The addition of the design element to the marks does not obviate the similarity between the marks.  Coca‑Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975).  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.  In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).

 

Application of the above standards clearly indicates that the dominant features of the marks are the phonetically equivalent terms HYDROTEC and HYDRO-TEC.  When the applicant's mark is compared to a registered mark, "the points of similarity are of greater importance than the points of difference."  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956).  The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP section 1207.01(b).

 

B.  The Goods

 

As fabric is made of fibers and yarn, the goods of both parties are likely to be encountered by the same consumer purchasing the ultimate finished product.  The applicant is advised that the goods of the parties need not be identical or directly competitive to find a likelihood of confusion.  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 come from a common source.  In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).

The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).  TMEP §1207.01(d)(vii). 

 

C.  Conclusion

 

For the foregoing reasons, the applicant’s HYDROTEC (and design) is refused registration under Section 2(d) of the Trademark Act.

 

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.

 

Informality

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informality.

 

Intended Use

 

The applicant must explain the intended use of its fiber and yarn.  Is it to be used in the wearing apparel?  Is it to be used for footwear?  37 C.F.R. §2.61(b).

 

U.S. Registration No. 2031366 – Refusal Continued

 

The examining attorney has carefully reviewed the applicant’s arguments, but remains unpersuaded.  Consequently, the refusal under Section 2(d), citing U.S. Registration No. 2031366, is CONTINUED.

 

 

Amendment to the Record

 

The lining statement is accepted and has been made of record.

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

/Katherine Stoides/

Examining Attorney

Law Office 110

(703) 308-9110 ext.166

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

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

 

Offc Action Outgoing [image/jpeg]

Offc Action Outgoing [image/jpeg]


uspto.report is an independent third-party trademark research tool that is not affiliated, endorsed, or sponsored by the United States Patent and Trademark Office (USPTO) or any other governmental organization. The information provided by uspto.report is based on publicly available data at the time of writing and is intended for informational purposes only.

While we strive to provide accurate and up-to-date information, we do not guarantee the accuracy, completeness, reliability, or suitability of the information displayed on this site. The use of this site is at your own risk. Any reliance you place on such information is therefore strictly at your own risk.

All official trademark data, including owner information, should be verified by visiting the official USPTO website at www.uspto.gov. This site is not intended to replace professional legal advice and should not be used as a substitute for consulting with a legal professional who is knowledgeable about trademark law.

© 2024 USPTO.report | Privacy Policy | Resources | RSS Feed of Trademarks | Trademark Filings Twitter Feed