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  76/521937

 

 

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

 

LIKELIHOOD OF CONFUSION REFUSAL IN INTERNATIONAL CLASSES 1 AND 20

 

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 in International Classes 1 and 20, so resembles the mark in U.S. Registration No. 2252905 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registration.

 

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).  Therefore, 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 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).  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).

 

COMPARISON OF THE MARKS

 

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 cited registration is for the mark “GERMGUARD.”  The applicant’s mark is “GERMGUARD.”  The parties’ marks are identical in sound, appearance, meaning, and commercial impression.  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).

 

COMPARISON OF THE GOODS

 

If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).  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 goods 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 registered mark is used in connection with “polyolefin resin composition for use as an anti-microbial agent sold as an integral part of solid plastic commercial and residential toilet seats” in International Class 11.  The applicant’s proposed mark will be used in connection with “toilet seats and toilet lids” in International Class 20[1], and “antimicrobial composition for coating glass and glass-like products” in International Class 1.  The marks of both the applicant and the registrant are used in connection with the identical goods, toilet seats.  Further, the applicant’s “antimicrobial composition for coating glass and glass-like products” is highly similar to the registrant’s “composition for use as an anti-microbial agent.”  Consequently, consumers are likely to be confused as to the source of the registrant’s goods and the applicant’s goods and believe that the goods emanate from a common source.  Based on the foregoing, registration in International classes 1 and 20 is refused.

 

REFUSAL APPLIES TO INTERNATIONAL CLASSES 1 AND 20 ONLY

 

The stated refusal refers to Classes 1 and 20 only and does not bar registration in the other class.  Please note, however, that failure to respond to a refusal that pertains to fewer than all classes in an application will result in abandonment of the combined application in its entirety.  TMEP §1403.05. 

 

APPLICANT’S OPTIONS WHERE REFUSAL PERTAINS TO MORE THAN ONE CLASS – ONE CLASS EXCEPTED

 

The applicant may respond to the stated refusal by doing one of the following:

 

(1)  amending the application to delete the classes to which the refusal pertains;

 

(2)  traversing the refusal of the combined application as a whole; or

 

(3)  filing a request to divide the application, so that the mark may be published for opposition in the class to which the refusal does not pertain (37 C.F.R. §2.87; TMEP §§1110.05, 1403.03 and 1403.05).

 

ONE PRIOR PENDING APPLICATION

 

Please note that the examining attorney has found a potentially conflicting pending application.

 

POSSIBILITY OF LIKELIHOOD OF CONFUSION

 

The examining attorney encloses information regarding pending Application Serial No. 76503179. 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)[2].  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.

 

 

 

APPLICANT MAY PRESENT ARGUMENTS REGARDING REFERENCED PENDING APPLICATION

 

If the applicant believes that there is no potential conflict between this application and the earlier-filed application, the applicant may present arguments relevant to the issue in a request to remove the application from suspension.  The election to file or not to file such a request at this time in no way limits the applicant's right to address this issue at a later point.

 

OTHER ISSUES

 

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.

 

UNACCEPTABLE IDENTIFICATION AND CLASSIFICATION OF GOODS

 

In the identification, the applicant should use the common commercial designation 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). The applicant must identify the goods specifically to enable the Office to classify the goods properly and to reach informed judgments concerning likelihood of confusion under 15 U.S.C. §1052(d).

 

The application in this case lists the goods, “ANTIMICROBIAL COMPOSITION FOR COATING GLASS AND GLASS-LIKE PRODUCTS” in International Class 1; “OVENS AND OVEN DOORS, PANELS, BACK SPLASHES AND COVERS; COOK TOPS AND HOB TOPS; MICROWAVE OVENS AND MICROWAVE OVEN DOORS AND PANELS; REFRIGERATORS AND REFRIGERATOR DOORS, DRAWERS, SHELVES, CONTROLS, CONTROL PANELS AND HANDLES, AND REFRIGERATED DISPLAY CASES, ALL OF THE AFOREMENTIONED GOODS INCLUDING GLASS OR GLASS-LIKE PANELS HAVING AN ANTIMICROBIAL COATING” in International Class 11; and “CUTTING BOARDS, CHEESE TRAYS, SERVING TRAYS, DECORATIVE PLACEMENTS, TRIVETS, COASTERS, HANGING HOME DECORATIONS, KITCHEN DECORATIONS, SINKS, NAPKIN AND TISSUE HOLDERS, BREAD BINS, KNIFE BLOCKS, PIZZA BOARDS, CAKE BOARDS, PASTRY BOARDS, BOOK STANDS, PICTURE FRAMES, MAGAZINE HOLDERS, FRUIT BASKETS AND FRUIT BOWLS, SHOWER DOORS, BATH ENCLOSURES, SCALES, CLOCKS, TOWEL HANGERS, TOWEL WARMERS, MIRRORS, LAMP ENCLOSURES, RACKS AND SHELVES, TABLES AND CHAIRS, HANDLES FOR DOORS, TOILET SEATS AND TOILET LIDS, DOORS AND SHELVES FOR BATHROOM CABINETS, KITCHEN AND DINING ROOM CABINETS, AND TELEVISION, SOUND SYSTEM, STEREO, DVD, AND VIDEO AND AUDIO CASSETTE CABINETS, ALL OF THE AFOREMENTIONED GOODS INCLUDING GLASS OR GLASS-LIKE PANELS HAVING AN ANTIMICROBIAL COATING” in International Class 20.

 

The majority of the wording in the proposed identification of goods is unacceptable as broad and indefinite and has been misclassified by the applicant.  TMEP section 1402.01.  The applicant should carefully review the Office’s Trademark Manual of Acceptable Identifications and Classifications for Goods and Services[3] in order to properly amend the proposed identification and classification of goods in this case.  The applicant must delete all broad and indefinite wording.

 

To follow are the examining attorney’s suggestions concerning the applicant’s identification and classification of goods.  The applicant may amend the application pursuant to the examining attorney’s suggestions, if accurate:

 

“ANTIMICROBIAL COMPOSITION FOR COATING GLASS AND GLASS-LIKE PRODUCTS” in International Class 1 [indefinite and possibly misclassified; applicant may amend to any of the following, if accurate: “antimicrobial coatings used in the manufacture of glass and imitation glass products, namely __________ (specify common commercial names of imitation glass products) in international class 1”; “antimicrobial glass plating compositions” in international class 1; “antimicrobial coatings in the nature of glass finishing and finishing for imitation glass products, namely for ___________ (specify common commercial names of imitation glass products) in international class 2].

 

AND

 

“OVENS [indefinite; specify type of ovens, e.g., coffee roasting, commercial cooking, domestic cooking, convection, dental, electric cooking, induction] AND OVEN DOORS [indefinite; may indicate “and oven doors for the aforesaid ovens,” if accurate], PANELS [indefinite and possibly misclassified; applicant may amend to any of the following, if accurate: “glass panels” in international class 19; “wall panels not of metal” in international class 19; oven panels sold as a component part of __________ (specify type of ovens, e.g., coffee roasting, commercial cooking, domestic cooking, convection, dental, electric cooking, induction) ovens” in international class 11; “wall panels of metal” in international class 6; “door panels for ovens” in international class 11], BACK SPLASHES [indefinite and misclassified; backsplashes are in the nature of wall coverings; applicant may amend to the following, if accurate: “_____________ (specify material composition, e.g., plastic, cork, vinyl or cloth) wall coverings in then nature of backsplashes” in international class 27; “resilient hard surface http://atlas.gov.uspto.report/netacgi/ - h8http://atlas.gov.uspto.report/netacgi/ - h10covering for http://atlas.gov.uspto.report/netacgi/ - h9http://atlas.gov.uspto.report/netacgi/ - h11walls in the nature of backsplashes” in international class 27] AND COVERS [indefinite; nature of covers is unclear; if applicant is referring to covers in the nature of oven ventilator hoods, the applicant may indicate, “covers in the nature of range hoods” in international class 11]; COOK TOPS AND HOB TOPS [indefinite; applicant may amend to “cook tops and hob tops, all sold as parts of ovens” in international class 11, if accurate]; MICROWAVE OVENS AND MICROWAVE OVEN DOORS AND PANELS [“panels” is indefinite; may amend to “microwave oven door panels” in international class 11]; REFRIGERATORS AND REFRIGERATOR DOORS, DRAWERS [indefinite; may indicate “refrigerator drawers sold as parts of refrigerators” in international class 11, if accurate], SHELVES [indefinite; may indicate “refrigerator shelves sold as parts of refrigerators” in international class 11], CONTROLS [indefinite and misclassified; applicant may amend to “electrical controls for controlling refrigerators” in international class 9], CONTROL PANELS [indefinite and misclassified; applicant may amend to “electrical control panels for controlling refrigerators” in international class 9] AND HANDLES [indefinite, applicant may amend to “handles for refrigerators” in international class 11], AND REFRIGERATED DISPLAY CASES [indefinite, applicant may amend to “refrigerated merchandise display cases” in international class 11], ALL OF THE AFOREMENTIONED GOODS INCLUDING GLASS OR GLASS-LIKE PANELS HAVING AN ANTIMICROBIAL COATING [unacceptable indefinite wording; applicant may amend to wording such as “all of the aforementioned goods having glass or imitation glass panels as a component part thereof,” if accurate; however, the applicant is advised that it does not appear that certain of the aforementioned goods would contain glass panels (e.g., handles, controls, etc.).  if this is the case, the applicant may not use the foregoing suggested language with such goods]” in International Class 11.

 

AND

 

 “CUTTING BOARDS [misclassified; cutting boards belong in international class 21], CHEESE TRAYS [indefinite and misclassified; applicant may indicate any of the following, if accurate: “cheese serving trays not of precious metal” in international class 21; “cheese serving trays of precious metal” in international class 14], SERVING TRAYS [indefinite and misclassified; the applicant may amend to any of the following, if accurate: “serving trays not of precious metal” in international class 21”; “serving trays of precious metal” in international class 14], DECORATIVE PLACEMENTS [indefinite; it is unclear what the applicant means by “placements”; accordingly, the applicant must review the Office’s ID Manual to formulate its own proper identification and classification for these goods], TRIVETS [misclassified; trivets belong in international class 21], COASTERS [indefinite and misclassified; “coasters made of paper” belong in international class 16; “plastic coasters” and “coasters not of paper and not being table linen” all belong in international class 21; “cloth coasters” and “table linen, namely coasters” all belong in international class 24], HANGING HOME DECORATIONS [indefinite and misclassified; “hanging home decorations” can include everything from curtains (in international class 24) to tapestry-style non-textile wall hangings (in international class 27); accordingly, the applicant must review the Office’s ID Manual to formulate its own proper identification and classification for these goods], KITCHEN DECORATIONS [indefinite and misclassified, “kitchen decorations” can include anything from “decorative refrigerator magnets” in international class 9 to “pictures” in international class 16 to “soap holders” in international class 21 to “kitchen rugs” in international class 27; accordingly, the applicant must review the Office’s ID Manual to formulate its own proper identification and classification for these goods], SINKS [misclassified; “sinks” belong in international class 11], NAPKIN AND TISSUE HOLDERS [misclassified and “tissue holders” is indefinite; applicant may amend to “napkin holders” in international class 21 and “facial tissue holders” in international class 21], BREAD BINS [indefinite and misclassified; applicant may amend to “bread boxes” in international class 21], KNIFE BLOCKS [misclassified; “knife blocks” belong in international class 21], PIZZA BOARDS [misclassified; amend to international class 21], CAKE BOARDS [misclassified; amend to international class 21], PASTRY BOARDS [misclassified; amend to international class 21], BOOK STANDS, PICTURE FRAMES, MAGAZINE HOLDERS, FRUIT BASKETS [indefinite and misclassified; may amend to any of the following “metal baskets for fruit” in international class 6; “___________ (indicate composition, e.g., wicker, straw, wood, cloth) baskets for fruit” in international class 21] AND FRUIT BOWLS [misclassified; bowls are classified in international class 21], SHOWER DOORS [misclassified; shower doors belong in international class 11], BATH ENCLOSURES [indefinite and misclassified; applicant may amend to “shower enclosures” in international class 11], SCALES [misclassified; scales belong in international class 9], CLOCKS [misclassified; clocks belong in international class 14], TOWEL HANGERS [indefinite and misclassified; applicant may amend to towel bars in international class 21, if accurate], TOWEL WARMERS [indefinite and misclassified; applicant may amend to “electric towel warmers” in international class 11, if accurate], MIRRORS, LAMP ENCLOSURES [indefinite and misclassified; it is unclear what the applicant means by “lamp enclosures”; if accurate, the applicant may amend to “lamp enclosures, namely filaments for electric lamps” in international class 11], RACKS AND SHELVES [“shelves” is acceptable and is properly classified; however, “racks” may include everything from “metal bicycle storage racks” in international class 6 to “CD storage racks” in international class 9 to “ski racks for vehicles” in international class 12 to “document file racks” in international class 16 to “spice racks” in international class 21 to “pool cue racks” in international class 28; accordingly, the applicant must review the Office’s ID Manual to formulate its own proper identification and classification for these goods], TABLES AND CHAIRS, HANDLES FOR DOORS [indefinite and possibly misclassified; “metal handles for doors” are classified in international class 6; “non-metal, plastic and wood handles for doors” are classified in international class 20”; “porcelain handles for doors” are classified in international class 21], TOILET SEATS AND TOILET LIDS [misclassified; “toilet seats and lids” are classified in international class 11], DOORS AND SHELVES FOR BATHROOM CABINETS, KITCHEN AND DINING ROOM CABINETS, AND TELEVISION, SOUND SYSTEM, STEREO, DVD, AND VIDEO AND AUDIO CASSETTE CABINETS [indefinite; may amend to “doors and shelves for furniture, namely for bathroom cabinets, kitchen and dining room cabinets, and television, sound system, stereo, DVD, and video and audio cassette cabinets], ALL OF THE AFOREMENTIONED GOODS INCLUDING GLASS OR GLASS-LIKE PANELS HAVING AN ANTIMICROBIAL COATING [unacceptable indefinite wording; applicant may amend to “all of the aforementioned goods having glass or imitation glass panels as a component part thereof,” if accurate; however, the applicant is advised that it does not appear that certain of the aforementioned goods would contain glass panels (e.g., lamp enclosures, towel hangers, etc.). if this is the case, the applicant may not use the foregoing suggested language with such goods.]” in International Class 20.

 

APPLICANT MAY NOT EXCEED SCOPE OF PRESENT IDENTIFICATION OF GOODS

 

While an application may be amended to clarify or limit the identification of goods, additions to the identification are not permitted.  37 C.F.R. Section 2.71(b).  TMEP section 1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of the present identification.

 

MULTI-CLASS REQUIREMENTS

 

If the applicant elects to add additional classes to this application, the applicant must comply with each of the following.

 

(1)  The applicant must list the goods by international class with the classes listed in ascending numerical order.  TMEP section 1113.01.

 

(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. Sections 2.6(a)(1) and 2.86(b); TMEP sections 810.01 and 1113.01.  Currently, the fee for filing a trademark application is $335.00 for each class of goods or services.

 

FEE INCREASE EFFECTIVE JANUARY 1, 2003 (FOR INFORMATION ONLY)

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00.  Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

ELECTRONIC RESPONSES (FOR INFORMATION ONLY)

If the applicant chooses to send an official response to this Office action via e-mail (to ecom108@uspto.gov), the applicant is advised that the response must:

 

(1)   be in English;

 

(2)   include the entire response as e-mail text, not as an attachment;

 

(3)   list the serial number in the "Subject" line; and

 

(4)   include any specimens or evidence in jpg or gif format only.

 

For security and compatibility reasons, the Office will not accept communications that include any attachments, other than those in jpg or gif format. Thus, no attachments in WordPerfect®, Word, Adobe® PDF or any other format EXCEPT jpg or gif can be accepted.

 

Additionally, all such communications sent via e-mail should (1) be signed electronically (using the same format accepted for electronically-filed applications, namely, the signatory must enter any combination of alpha/numeric characters that has been specifically adopted to serve the function of the signature, preceded and followed by the forward slash (/) symbol. Acceptable "signatures" could include: /john doe/; /jd/; and /123-4567/. (See 64 FR 33056, 33062 (June 21, 1999))); and (2) address every issue raised. Failure to comply with these additional requirements will result in delays in prosecuting your application.

 

CHANGE OF ADDRESS FOR MAILING TRADEMARK CORRESPONDENCE (FOR INFORMATION ONLY)

 

To expedite processing, the Office encourages parties to file documents through the Trademark Electronic Application System, at http://www.gov.uspto.report/teas/index.html, wherever possible. 

 

Effective May 1, 2003, the mailing addresses for filing trademark-related documents on paper has changed.  See notices at 68 FR 19371 (April 21, 2003) and 68 FR 14332 (March 25, 2003). 

 

All trademark-related correspondence filed by mail, except for documents sent to the Assignment Services Division for recordation and requests for copies of trademark documents, should be addressed to:

 

Commissioner for Trademarks

2900 Crystal Drive

Arlington, Virginia  22202-3514

 

The mail box designations previously listed in TMEP §305.01 are no longer in use.

 

Requests to record documents in the Assignment Services Division can be filed electronically at http://etas.gov.uspto.report/.  Paper documents and cover sheets to be recorded in the Assignment Services Division should be sent to:

 

Mail Stop Assignment Recordation Services

Director of the United States Patent and Trademark Office

P. O. Box 1450

Alexandria VA  22313-1450

 

Copies of trademark documents can be ordered through the Office’s website at http://www.uspto.gov.  Requests for certified or uncertified copies of trademark documents filed on paper should be sent, with an authorization to charge the fee to a credit card or USPTO deposit account, to: 

 

Mail Stop Document Services

Director of the United States Patent and Trademark Office

P. O. Box 1450, Alexandria VA  22313-1450

 

CHANGE OF ADDRESS (FOR INFORMATION ONLY)

 

Applicants may now file address change correspondence via a new form on TEAS.  Address changes may be performed on up to 20 cases at a time.  The Trademark Office strongly encourages applicants to use this form, available online at: http://eteas.gov.uspto.report/V2.0/ca200/WIZARD.htm

 

If the applicant has any questions or needs assistance in responding to this Office Action, please telephone the undersigned examining attorney.

Sonya B. Stephens

 

/Sonya B. Stephens/

Trademark Attorney

Law Office 108

(703) 308-9108 ext. 227 (phone)

(703) 746-8108 (fax)

ecom108@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.