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  76/513105

 

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

 

REFUSAL TO REGISTER ON THE GROUNDS OF LIKELIHOOD OF CONFUSION WITH PRIOR REGISTRATION

 

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, so resembles the mark in U.S. Registration No. 1569144 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. 

 

The applicant has applied to register EXPEL for “line of odor neutralizers and disinfectants.”  The registrant owns a registration for X-PEL for “odor neutralizer for floors, hard surfaces, carpets, upholstery, drapes and fabrics.”  The marks are similar in appearance, sound, connotation and commercial impression.  The applicant’s mark is the phonetic equivalent of the registrant’s mark.  The differences between the two marks in spelling and punctuation are de minimis and do not overcome the likelihood of confusion.  Furthermore, the goods in conjunction with which the marks are used are identical or related.  In view of the foregoing, confusion is likely and registration must be refused.

 

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 informalities:

INFORMALITIES

 

IDENTIFICATION UNDULY VAGUE/APPLICANT MUST AMEND THE IDENTIFICATION

 

In the identification of goods, 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 “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then those words must be followed by the word “namely” and the goods listed by their common commercial names.  TMEP §§1402.01 and 1402.03(a). 

 

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

The applicant’s identification of goods and services reads as follows:

 

Line of odor neutralizers and disinfectants in International Class 3.

 

Line of odor neutralizers and disinfectants in International Class 5.

 

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

Specifically, the applicant must clarify what it means by “line of.”  If by this the applicant means that it is using the mark on a full line of odor neutralizers and disinfectants, if must amend the identification accordingly.  If it does not mean this, the applicant must delete the superfluous phrase “line of” and must identify the pertinent types of “odor neutralizers” and “disinfectants” by their common commercial names.  If there are no common commercial names, the applicant must describe the goods.

 

The applicant may adopt the following identification, if accurate: 

 

Odor neutralizers and disinfectants, namely, pet odor removers and disinfectant soaps in International Class 3.

 

Odor neutralizers and disinfectants, namely, odor neutralizing preparations for use on carpets and all purpose disinfectants in International Class 5.

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

NO SPECIMENS OF USE SUBMITTED/APPLICANT MUST SUBMIT SPECIMENS OF USE AND DECLARATION IN SUPPORT

 

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 for each class.  TMEP §904.  The application does not contain any specimens.  The applicant must submit a specimen of use for each class, and must submit the following statement:

 

The specimens were 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.  A suitable declaration would read:

 

DECLARATION

 

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 substitute specimens submitted herewith were in use in commerce at least as early as the filing date of the application; 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)

Please note the following:  If the applicant amends the identification to indicate that it uses the mark to identify the source of a full line of odor neutralizers and disinfectants in Class 3 and/or Class 5, the applicant will be required to submit specimen(s) of use that show use of the mark on virtually all of the goods included in the amended identification. If the applicant cannot provide evidence to substantiate use of the mark for a full line of the pertinent products, the applicant will be required to amend the identification of goods to conform to the usual standards for specificity.  TMEP 1402.03(c)            

 

If the applicant has questions about the status of its application, it may also call the Trademark Status Line at (703) 305-8747.

 

Nancy Clarke

/nancy clarke/

Trademark Examining Attorney

Law Office 102

Tel. (703) 308-9102, Ext. 212

Fax (703) 746-8102

ecom102@uspto

 

 

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.