UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 76/433082
APPLICANT: Unified Marine, Inc.
|
|
|
CORRESPONDENT ADDRESS: UNIFIED MARINE, INC. 1493 RAILHEAD BOULEVARD NAPLES, FLORIDA 34110
|
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom104@uspto.gov
|
|
MARK: ROAD WARRIOR BY SEASENSE
|
|
|
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.
|
Serial Number 76/433082
The assigned examining attorney has reviewed the referenced application and determined the following.
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 or in connection with the identified goods, so resembles the marks in U.S. Registration Nos. 2284491, 2201138, and 2589661 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP section 1207. See the enclosed registrations.
Similarity Between Marks
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). If the goods of the parties differ, it is necessary to show that they are related in some manner. In re Mack, 197 USPQ 755 (TTAB 1977).
The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).
The applicant seeks to register “ROAD WARRIOR BY SEASENSE” for use on its goods. The cited registrations are all for the marks “ROAD WARRIOR.”
The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977). In the application at hand, the applicant's mark is similar in sound, appearance and meaning to the registrant’s mark.
Goods or Services Related
If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
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 applicant’s goods are broadly identified as “vehicles and component parts of vehicles.”
The goods to which the registered mark “ROADWARRIOR” Reg. No. 2284491 is applied are:
• Relatively small non-commercial flatbed highway utility trailers which have a gross vehicle weight rating of less than 15,000 pounds, are 8 feet to 22 feet long, and are used primarily for light weight duty personal and recreational purposes, such as selectively short distance transporting of light building materials, construction tools, trash, furniture, yard waste, snowmobiles, lawnmowers and tractors, motorcycles, ATV 4wheelers, fire wood, small farm machinery, antique farm tractors, demolition derby cars, racing cars, collector cars, sport utility vehicles, and pick-up trucks; are towed by cars, pick-ups, and sport utility vehicles, and are sold primarily in a regional market area, are federal excise tax exempt because of their restricted size and weight, are advertised primarily in regional automotive sports and automotive car collector markets, and are advertised and shown primarily in automotive trade publications and trade shows.
The goods to which the mark “ROAD WARRIOR” Reg. No. 2201138 is applied are:
• commercial highway trailers.
The goods to which the mark “ROAD WARRIOR” Reg. No. 2589661 is applied are:
• epoxy-based protective coating for use on truck beds.
It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973). Since the identification of the applicant’s goods/services is very broad, it is presumed that the application encompasses all goods/services of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available for all potential customers. TMEP §1207.01(a)(iii).
Thus, the examining attorney finds the applicant’s products to be so related to the registrant’s goods that it is likely that consumers will be confused as to the origin of the goods. Registration is refused because of a likelihood of confusion with Registration Nos. 2284491, 2201138, and 2589661.
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.
Please note that the examining attorney has found a potentially conflicting pending application, as well.
The examining attorney encloses information regarding pending Application Serial No. 76433256. Although filed on the same date as applicant’s mark, the execution date of the referenced application precedes the applicant's execution date. There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d). If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d). 37 C.F.R. Section 2.83; TMEP section 1208.01.
Therefore, this application will be suspended upon receipt of the applicant’s reply to the issues raised in this action. Suspension will continue until the disposition of the prior pending Application Serial No. 76433256. If the applicant believes that there is no potential conflict between this application and the earlier-filed application, the applicant may present arguments relevant to the issue. The election to file or not to file such a request at this time in no way limits the applicant's right to address this issue at a later point.
The applicant must also respond to the following informalities.
The applicant has identified its goods as “vehicles and component parts of vehicles.” This identification is unacceptable as indefinite. The applicant must amend its identification to state the common commercial name of the goods and the exact use for which they are intended.
Amendment Guidelines
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. Section 2.71(a); TMEP section 804.09. Therefore, the applicant may not amend to include any goods or services that are not within the scope of goods or service set forth in the present identification.
The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types. The listing is by no means exhaustive but is intended to serve as a guide to examining attorneys in acting on applications and to the public in preparing applications.
Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified.
The Acceptable Identification of Goods and Services Manual may be purchased, along with other trademark information, in a CD-ROM format from the Office of Electronic Information Products Development of the Patent and Trademark Office ((703) 306-2600). See notice at 1190 TMOG 67 (Sept. 17, 1996). The applicant is advised that the Acceptable Identification of Goods and Services Manual is accessible via the USPTO homepage at the following address: http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
The applicant’s drawing is unacceptable because it exceeds the Office’s size requirements. The requirements for a special‑form drawing are as follows:
(1) The drawing must appear in black and white; no color is permitted.
(2) Every line and letter must be black and clear.
(3) The use of gray to indicate shading is unacceptable.
(4) The lining must not be too fine or too close together.
(5) The preferred size of the area in which the mark is displayed is 2½ inches (6.1 cm.) high and 2½ inches (6.1 cm.) wide. It should not be larger than 4 inches (10.3 cm.) high or 4 inches (10.3 cm.) wide.
(6) If the reduction of the mark to the required size renders any details illegible, the applicant may insert a statement in the application to describe the mark and these details.
37 C.F.R. §2.52; TMEP §§807.01(b) and 807.07(a). The Office will enforce these drawing requirements strictly.
The Office prefers that the drawing be depicted on a separate sheet of smooth, nonshiny, white paper 8 to 8½ inches (20.3 to 21.6 cm.) wide and 11 inches (27.9 cm.) long, and that the sheet contain a heading listing, on separate lines, the applicant’s complete name; the applicant’s address; the goods or services recited in the application; and, if the application is filed under Section 1(a) of the Act, the dates of first use of the mark and of first use of the mark in commerce; or, if the application is filed under Section 44(d), the priority filing date of the foreign application. 37 C.F.R. §2.52(b); TMEP §§807.01(a), 807.01(b), 807.01(c) and 807.07(a).
If the applicant is the owner of Registration No. 2569168, the applicant must submit a claim of ownership. 37 C.F.R. §2.36; TMEP §812.
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.
John T. Lincoski
Trademark Attorney
Law Office 104
(703)308-9104 ext. 261