UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/524989
APPLICANT: INSL-X PRODUCTS CORPORATION
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CORRESPONDENT ADDRESS: DAVID S. ABRAMS ROYLANCE, ABRAMS, BERDO & GOODMAN 1300 19TH STREET, N.W., SUITE 600 WASHINGTON, D.C. 20036
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom111@uspto.gov
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MARK: PERFORMAX
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CORRESPONDENT’S REFERENCE/DOCKET NO: 45311
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/524989
The assigned trademark examining attorney has reviewed the referenced application filed on June 23, 2003, and has determined the following.
Section 2(d) - Likelihood of Confusion Refusal
Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2,061,889. Both marks include the wording “perform” and “maximum” or their derivatives or equivalents for building paint. See attached evidence from an on-line abbreviations dictionary that “max” means “maximum”. Trademark Act Section 2(d), 15 U.S.C. §1052(d); 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.
If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirement.
Identification of Goods
The identification of goods needs clarification because applicant uses the wording “including.” The identification of goods must be specific and all-inclusive. Applicant should amend the identification to replace this wording with "namely." Please note that applicant may amend the identification to list only those items that are within the scope of the goods set forth in the application. 37 C.F.R. §2.71(a); TMEP §§1402.01 and 1402.03(a).
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
Fee Increase
Fee increase effective January 1, 2003
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.
/Hannah Fisher/
Trademark Examining Attorney
Law Office 111
(703) 308-9110 x 171 or (301) 610-5388
ecom111@uspto.gov
Fax: (703) 746-8111
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.