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  76/499035

 

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. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the marks in U.S. Registration Nos. 0858102, 1804804, and 76273780 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  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 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). 

 

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).

 

The applicant’s mark is ACL.  The registered marks are ACL, ACL and ACL and design.  The marks are virtually identical in appearance and commercial impression. 

 

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).

 

The applicant’s services include  “leasing of containers, pallets and car carriers for use in the aircraft industry.”  The registrants’ services are “transportation of oceangoing cargo and storage incidental thereto,” “transportation of the goods of others in inland waterways by barge, and warehousing and storage,” and “providing ocean transportation, shipping services, storage and delivery services.”  The services are closely related, namely, they all related to the shipping of goods.  Furthermore, all of the applicant’s goods are also shipping related.

 

Because the marks are virtually identical and the goods and services, the similarities among the marks and the goods and services are so great as to create a likelihood of confusion among consumers as to the source of the goods and services.  The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppers (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).

 

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.

 

Specimen

An application based on use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), must include a specimen showing use of the mark in commerce on or in connection with the goods/services.  TMEP §904.  The application does not contain a specimen.  The applicant must submit a specimen, and must submit the following statement:

 

The specimen was in use in commerce at least as early as the filing date of the application.

 

This statement must be verified with an affidavit or a declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); TMEP §904.09.

 

Declaration

The following is a properly worded declaration under 37 C.F.R. Section 2.20.  At the end of the response, the applicant should insert the declaration signed by someone authorized to sign under 37 C.F.R. Section 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; that the substitute specimen was in use in commerce at least as early as the filing date of the application; 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)

 

Identification of Goods

The wording “and related accessories ” in the identification of goods in International Class 6 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 Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types.  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.  TMEP Section 1404.04.

 

The applicant is strongly encouraged to consult the Acceptable Identification of Goods and Services Manual.  The Manual is available on the PTO's "homepage" on the Internet, which can be accessed at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.  The Manual may also 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).  In addition, the Manual is available in hard copy on a subscription basis form the Government Printing Office.  TMEP Section 1404.04.

 

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 1404.09.  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 applicant may adopt the following identification of goods, if accurate:

 

Metal cargo containers, pallets and related accessories, namely, [specify]; metal cargo tie down hardware, namely fittings and hooks, in International Class 6.

 

The wording in the remainder of the identification of goods/recitation of services is acceptable as written.

Response to Office Action

Please note: If the applicant submits a response via email, an electronic signature is required.  An applicant, registrant or attorney may sign an e-mail communication by entering a "symbol" that he or she has adopted as a signature between two slashes.  In addition, the Office will accept an e-mail communication containing the "/s/" ("/(signature)/") notation in lieu of a signature.  A scanned image of a document signed in ink is also acceptable, as long as the image is attached in .jpg or .gif format.  TMEP Section 304.08

 

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

 

 

 

 

/alrademacher/

April Rademacher

Examining Attorney

Law Office 102

(703) 308-9102 x206

(703) 746-8102 (fax)

april.rademacher@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.