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  76/465268

 

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

 

Refusal based on 2(d) – Likelihood of Confusion

 

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. 2200572 and 2385919 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registrations.

 

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 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).

 

Comparing the Marks

 

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).

 

The applicant’s mark is GRASSHAWG ROTARY with the design of a hog and grass and the registrant’s marks are GRASSHOG with a design and GRASS HOG.  The marks of the parties are similar in appearance, sound, connotation, and commercial impression, because “GRASSHAWG” and “GRASSHOG” are phonetic equivalents.  The descriptive word “ROTARY” and the design in the applicant’s mark do not change the sound, appearance and commercial impression sufficiently to avoid the likelihood of confusion. Therefore the similarities in the elements that exist are sufficient to find a likelihood of confusion.

 

Goods Need Not be Identical or Competing

 

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 services 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/services are “manufacturing and distribution services of lawnmower blades, trimmer line, and other related outdoor service parts” and the registrant’s goods are “string trimmers, namely, power-operated grass trimmers.”  The goods are related because the applicant’s identification of goods is sufficiently indefinite that it encompasses goods of the same sort as those offered by the registrant.  Further, the goods are likely to travel in the same channels of trade.  The conditions surrounding the marketing of the goods may 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.

 

Because of the similarities between the marks and the goods of the parties, a likelihood of confusion is created.  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).

 

Prior Pending Application

 

The examining attorney encloses information regarding pending Application Serial No. 78109673.  The filing date of the referenced application precedes the applicant's filing 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.

 

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

 

Identification of Goods/Services

 

The wording "manufacturing and distribution services of lawnmower blades, trimmer line, and other related outdoor service parts" in the identification of goods is too broad because it could include items classified in other classes.  The applicant must amend the identification to list each item by its common commercial name.  TMEP sections 804 and 804.03.  Specifically, it is not clear whether the applicant’s mark is for goods such as lawnmower blades and trimmer line or if the applicant is applying for distributorship services.  The applicant should note that “manufacturing” is not a service unless it is manufacturing to the specification of others.

 

The applicant may adopt the following identification of goods, if accurate: 

 

Lawnmower blades; lawn mowers, in International Class 7; and/or

 

Nylon weed trimmer line, in International Class 22; and/or

 

Distributorships in the field of lawnmower blades, weed trimmer line and lawn mower parts, in International Class 35; and/or

 

Manufacture of [indicate specific items, e.g. lawnmower blades, weed trimmer line] to order and/or specification of others, in 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. Section 2.71(b); TMEP section 804.09.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

The application identifies goods and 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. 

 

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.  37 C.F.R. §2.6(a)(1). 

 

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.  

 

Disclaimer

 

The applicant must disclaim the descriptive wording "ROTARY" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.02(a).  The wording is merely descriptive because it describes a feature and characteristic of the applicant’s goods/services.   Both lawn mowers and weed trimmers contain  a “rotary.”  The examining attorney refers to the following definition:

 

ro·ta·ry (ro¹te-rê) adjective

Of, relating to, causing, or characterized by rotation, especially axial rotation.

 

noun

plural ro·ta·ries

1.    A part or device that rotates around an axis.

2.          A traffic circle.[1]

 

A properly worded disclaimer should read as follows:

 

“No claim is made to the exclusive right to use ROTARY apart from the mark as shown.”

 

Ownership of Prior Registration

 

If the applicant is the owner of Registration No. 2446144, the applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.

 

Applicant’s Response

 

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.

 

 

 

/Michael Souders/

Trademark Attorney

Law Office 115

ecom115@uspto.gov

(703) 308-9115 ext. 208

 

 

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.