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  76/491769

 

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

 

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. 1745088 and 1981298 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registrations. 

 

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the goods, to cause confusion, or to cause mistake or to deceive. TMEP section 1207.01.  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 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 similarity of the goods.  The overriding concern is to prevent buyer confusion as to the source of the goods.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980). 

 

The proposed mark, MASTER-TECH, and the registered marks, MASTER-TECH and MASTERTECH, are similar in each of the five factors listed by the court in DuPont.  The sound of the marks and their commercial meanings are identical.  The goods are very similar and related, hand tools and safety equipment versus a hand held tester for auto electronics systems and safety equipment, tape, and glue versus nightlights, flashlights, glue guns and adhesive tape.  Likewise, the consumers of these goods are the same, those interested in safety equipment, hand tools, glue, and tape.  Therefore, the consumer is likely to be confused when considering the purchase of these goods from the applicant or the registrant.  Any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (CCPA 1974).

 

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).

 

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 issues. 

 

Identification of Goods

 

The wording “hand tools” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses.  For example, the applicant may be referring to, if accurate, “Hand tools, namely, saws, wrenches, tongs, putty knives, or hammers” and would need to indicate such within International Class 8.  TMEP §1402.01.

 

The wording “and accessories” in the identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the commercial name of the goods.  If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP §1402.01.

 

The wording “fasteners” in the identification of goods is unacceptable as indefinite because the type of fastener must be noted.  The applicant may amend this wording to “fasteners, namely, metal bars and chains” within International Class 6, “license plate fasteners” which are International Class 12 goods, “tie fasteners” within International Class 14, “paper fasteners” which are classified within International Class 16, or “non-metal fasteners, namely [indicate specific items, e.g., bolts, nails, rivets, screws]” in Class 20, if accurate.  TMEP §1402.01.

 

The wording “tape” in the identification of goods is unacceptable as indefinite because the type of tape must be indicated.  The applicant may amend this wording to “bookbinding tape” in International Class 16 or “plastic tape for use in [indicate field of use]” in International Class 17,   if accurate.  TMEP §1402.01.

 

The wording “safety equipment” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “safety equipment, namely, beacon lights” or “safety equipment namely, fire escape ladders,” if accurate, which are both International Class 9 goods.   TMEP §1402.01.

 

The applicant has classified “batteries” in International Class 8.  The correct classification is International Class 9.  The applicant must either delete these goods or add International Class 9 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

The wording “glue” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “glue for industrial purposes [may indicate specific industry] within International Class 1, “surgical glues,” within International Class 10, or “glue for stationery or household use,” within International Class 16, if accurate.  TMEP §1402.01.

 

The wording “eye glass repair kits” 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.  For example, the applicant may amend this language to, if accurate, “eye glass repair kits comprised of magnifying glasses, screws, and a screw driver, sold as a unit” within International Class 9.  TMEP §§1401.04(b), 1402.01 and 1402.03.

 

 The wording “bicycle repair kits and accessories” in the identification of goods is too broad because it could include items classified in other classes.  In addition, the wording “accessories” is overly indefinite and needs to be clarified.  The applicant must amend the identification to list each item by its common commercial name.  For example, the applicant may amend this language to, if accurate, “bicycle repair kits comprising bicycle chains, brakes, spokes, tire tubes sold as a unit” within International Class 12 or “Bicycle repair kits comprising handtools, namely screwdrivers, hammers, dumbbell wrenches, tire levers, valve caps, and tube repair kit sold as a unit” within International Class 8.  TMEP §§1401.04(b), 1402.01 and 1402.03.

 

In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.  If the applicant chooses to use indefinite terms, such as “clothing" then those words must be followed by the word "namely" and the goods listed by their common commercial names such as T-shirts, pants, or sweatshirts.  Please note, these are goods that are classified within International Class 25.  TMEP §1402.01.

 

Additions Not Permitted

 

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 the goods or services recited in the present identification.

 

On-Line Identification Manual

 

The applicant may wish to consult the on-line identification manual on the PTO homepage for acceptable common names of goods and their classification.

 

http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/

 

 

Additional Fee May Be Required

 

The application identifies goods that are 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. 

 

If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods in each class and list the goods 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 not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(b); 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.  

 

(3)  The applicant must submit: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application, 37 C.F.R. §§2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.

 

(4)      The applicant must submit an affidavit or a declaration under 37 C.F.R. §2.20 signed by the applicant to verify (3) above.  37 C.F.R. §§2.59(a) and 2.71(c).

 

 

 

Specimens Not Acceptable

 

The specimen is unacceptable as evidence of actual trademark use because the examining attorney is unable to see the mark clearly in relationship to the goods being provided.  The applicant must submit a specimen showing the mark as used in commerce.  37 C.F.R. §2.56. 

 

Examples of acceptable specimens are tags, labels, instruction manuals, containers or photographs that show the mark on the goods or packaging.  TMEP §904.04 et seq.  The applicant must verify, with an affidavit or a declaration under 37 C.F.R. §2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application.  Jim Dandy Co. v. Siler City Mills, Inc., 209 USPQ 764 (TTAB 1981); 37 C.F.R. §2.59(a); TMEP §904.09.

 

The following is a properly worded declaration under 37 C.F.R. §2.20.  At the end of the response, the applicant should insert the declaration signed by a person authorized to sign under 37 C.F.R. §2.33(a).

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.

 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

 

 

________________________

/Judy Grundy/

Trademark Examining Attorney

Law Office 106

(703) 308-9106 ext. 296

(703) 746-8106 fax number

ecom106@uspto.gov (official responses)

judy.grundy@uspto.gov (non-responsive questions)

 

 

 

 

 

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.