Reconsideration Letter

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

Serial Number 76/491865

 

Applicant is requesting reconsideration of a final refusal dated 5/24/04.

 

After careful consideration of the law and facts of the case, the examining attorney must deny the request for reconsideration and adhere to the final action as written since no new facts or reasons have been presented that are significant and compelling with regard to the point at issue.

 

The examining attorney notes that the applicant has deleted Class 6 from the identification of goods has and the identification of goods has been amended to “entry doors not made of metal and door facings for entry doors not made of metal” in Class 19. 

 

The applicant has argued that the evidence made of record with final refusal does not support a conclusion that the applicant’s goods and registrant’s goods are closely related and complementary.  In addition, the applicant has asserted that the classification of the goods in separate classes demonstrates the differences between the goods.  The examining attorney disagrees.

 

The information about tin the six registrations attached to the final office action clearly demonstrate that doors and metal door hardware are closely related goods that consumers are accustomed to seeing marketed under the same mark.    Attached are copies of twenty printouts from the USPTO X-Search database, which show additional third-party registrations of marks used in connection with the same or similar goods as those of applicant and registrant in this case.  These printouts have probative value to the extent that they serve to suggest that the goods listed therein, namely “doors” and metal door hardware in the nature of “locks”, “latches”, and “knobs”, are of a kind that may emanate from a single source.  See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).

 

Regardless of their classifications, doors and metal door hardware are by their very nature complementary goods. The fact that the United States Patent and Trademark Office classifies goods or services in different classes does not establish that the goods and services are unrelated under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  The determination concerning the proper classification of goods or services is a purely administrative determination unrelated to the determination of likelihood of confusion.  Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771 (Fed. Cir. 1993); National Football League v. Jasper Alliance Corp., 16 USPQ2d 1212, 1216 n.5 (TTAB 1990); TMEP §1207.01(d)(v).

 

The marks remain identical and the goods remain closely related.

 

Accordingly, applicant’s request for reconsideration is denied, and the Section 2(d) final refusal is continued.  37 C.F.R. §2.64(b); TMEP §715.04. 

 

The application file will be returned to the Trademark Trial and Appeal Board for resumption of the appeal.

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

 

/John M. C. Kelly/

Trademark Attorney

USPTO - Trademark Law Office 112

571.272.9412

Fax: 571.273-9112 (official responses only)