Offc Action Outgoing

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  76/450849

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

Registration Refused – 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. 1,853,488 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. 

 

Applicant’s mark is, INTERSEAL and design, whereas, registrant’s mark is, INTERSEAL.  The literal portion of the applicant’s mark is identical to the registrant’s mark.  The literal portions are the dominant and most significant features of marks because consumers will call for the goods or services in the marketplace by that portion.  In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); In re Drug Research Reports, Inc., 200 USPQ 554 (TTAB 1978).  For this reason, the examining attorney must give greater weight to the literal portions of the marks in determining whether there is a likelihood of confusion.  TMEP §1207.01(c)(ii). 

 

Moreover, the applicant’s goods are for “non precious metals and their alloys, metal construction material, non electric metal wiring and cables or metal products otherwise comprised under different classification particularly seals and straps made of such materials” and registrant’s goods are for “machine parts; namely, mechanical slurry seals, and parts therefor; namely, steel springs, carbide seal rings, steel bearing sleeves, steel clamping collars, steel ring holders, and steel seal bodies.”  Applicant’s recitation of goods is so broad and indefinite that it could include the more specific goods of the registrant or at the very least, be related in the sense that the goods of both parties travel in the same trade channels.  

The examining attorney must determine whether there is a likelihood of confusion on the basis of the goods/services identified in the application and registration.  If the application describes the goods/services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the application encompasses all goods/services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  TMEP §1207.01(a)(iii). 

Accordingly, the examining attorney refuses registration on the Principal Register 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.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issue.

 

Identification of Goods

The identification of goods is unacceptable as indefinite.  TMEP section 1402.   The applicant must amend the identification to specify the commercial name of the goods.  TMEP §1402.01. 

 

The applicant may adopt the following identification, if accurate:

 

Non-precious metal alloys for further manufacturing; construction elements made of metal, namely, [specify common commercial name, e.g.: shores, supports, braces]; non electric metal wiring and cables; metal products, namely seals and straps, in International Class 6.

 

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 1402.09.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

PLEASE REFER TO THE ACCEPTABLE IDENTIFICATION OF GOODS AND SERVICES MANUAL WHEN DRAFTING IDENTIFICATIONS.

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 Manual is also available on the PTO’s “homepage” on the Internet, which can be accessed at http://www.uspto.gov, and in hard-copy on a subscription basis from the Government Printing Office. 

 

Drawing – Lining Statement Required

The lining shown in the drawing appears to be a feature of the mark and not intended to indicate color.  The applicant must insert a statement to that effect.  37 C.F.R. §2.37; TMEP §807.09(e).

 

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

 

 

/Tricia McDermott Thompkins/

Trademark Examining Attorney

(703) 308-9114 x263

(703) 746-8114 (fax)

ecom@114@uspto.gov

 

 

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.