Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/540600

 

This letter responds to the applicant's communication filed on October 10, 2006.

 

Final Substantive Refusal:

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d), 15 U.S.C. §1052(d), is now made FINAL with respect to U.S. Registration No(s). Nos. 1675117 and 1624427 . 

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 U.S. Registration Nos. 1675117 and 1624427 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207. 

The applicant applied to register the mark “POWER PRO” for low velocity powder actuated fastening tools for fastening of nails in class 008.

The registered mark is “POWER PRO” for metal fasteners, namely, screws for power tools, in class 006 and POWER PRO for grinder and polisher machines used in the preparation of samples, metal, rock, plastics, ceramics and glass for microstructural evaluation in class 007.

The applicant was informed that the registrant and the applicant in these cases have identical marks.  The applicant disagrees and argues:

1-     The Marks have Co-Existed In the Market for Over 8 Years;

2-     The Cited Registration is Weak;

3-     The Parties’ Products Can be Distinguished;

4-     Impulse v. Sophisticated Buyers;

5-     Applicant Owns a Family of POWER Marks.

 

The trademark-examining attorney has considered applicant’s arguments carefully and found them unpersuasive for the reason(s) below.

 

The applicant argues that there has been no actual confusion in the marketplace. The examiner cannot assume that confusion will not happen because of applicant's report of no conflicts. Applicant’s representation cannot be taken to mean there are no known instances of actual confusion. It may mean simply that applicant perceives the goods/services of the parties as unrelated and, therefore, it has not experienced any competitive conflicts with registrant.  Moreover, even if applicant's representation means that applicant has not experienced instances of actual confusion, this contention is of limited probative value, as there is little information about the extent of use of the respective marks and, therefore, the extent of opportunities for confusion to arise. Cf. Cooper Industries, Inc. v. Repcoparts USA Inc., 218 USPQ 81, 85-86 (TTAB 1983) (apparent absence of actual confusion of minimal value given only brief history of contemporaneous use and insufficient record on subject of use).

 

In addition, there is no information from registrant regarding any instances of confusion of which it is or is not aware of. Finally, there is nothing in the record tending to corroborate applicant's presumptive report that there has been no actual confusion, as would be present, for example, if applicant had presented us with a consent agreement between the parties. Thus, the "actual confusion" factor does not aid applicant.

 

In regard to the "market interface" factor, applicant, has not made of record any information which would aid in a determination as to whether this factor militates in favor of, or against, finding a likelihood of confusion.

 

The applicant also states that the mark is weak. Even if applicant has shown that the cited mark is “weak,” such marks are still entitled to protection against registration by a subsequent user of the same or similar mark for the same or closely related goods or services.  See Hollister Incorporated v. Ident A Pet, Inc., 193 USPQ 439 (TTAB 1976) and cases cited therein.

 

Applicant also raises the argument that the existence of several third-party registrations of marks that include applicant’s mark/term and as such dictates that applicant's marks should be registered as well. The problem with this argument is that, contrary to applicant's contention, the third-party registrations list goods and/or services that are unrelated to the goods/services of either applicant or registrant. Indeed, those marks, when considered in their entireties, are each quite distinguishable from both the registered mark(s) and the mark(s) applicant is trying to register.

 

The applicant also argues that its purchasers are sophisticated. The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983); TMEP §1207.01(d)(vii).

 

Where the relevant consumer is comprised of both professionals and the general public, the standard of care when purchasing the goods is equal to that of the least sophisticated purchaser in the class.  Alfacell Corp. v. Anticancer Inc., 71 USPQ2d 1301, 1304 (TTAB 2004) (as stated in KOS Pharmaceuticals Inc., v. Andrx Corp., 369 F.3d 700, 70 USPQ2d 1874 (3d Cir. 2004), and citing Checkpoint Sys., Inc., v. Check Point Software Techs., Inc., 269 F.3d 270, 285, 60 USPQ2d 1609, 1617-1618 (3d Cir. 2001)).

 

The applicant also indicates that it features a family of marks. The Court of Appeals for the Federal Circuit has defined a family of marks as follows:  “a family of marks is a group of marks having a recognizable common characteristic, wherein the marks are composed and used in such a way that the public associates not only the individual marks, but the common characteristic of the family with the trademark owner. Simply using a series of similar marks does not of itself establish the existence of a family. There must be recognition among the purchasing public that the common characteristic is indicative of a common origin of the goods. Recognition of a family is achieved when the pattern of usage of the common element is sufficient to be indicative of the origin of the family.” J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991). Further, the Board has in the past required the following:  in order to establish a "family of marks," it must be demonstrated that the marks asserted to comprise its "family" or a number of them have been used and advertised in promotional material or used in everyday sales activities in such a manner as to create common exposure and thereafter recognition of common ownership based upon a feature common to each mark.  American Standard Inc. v. Scott & Fetzer Co., 200 USPQ 457, 461 (TTAB 1978). Further, a party must show that the 'family' feature is distinctive. Marion Laboratories Inc. v. Biochemical/Diagnostics Inc., 6 USPQ2d 1215 (TTAB 1988).  The applicant has not provided any of the necessary proof to establish a family of marks other than to provide a list of marks that have similar elements. Therefore, the refusal to register under Trademark Act Section 2(d) is maintained and made FINAL.

Remedies:

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 (1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

Questions:

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

/Lourdes D. Ayala/

Examining Attorney

Law Office 106

(571) 272- 9316

Fax: (571) 273-9106

 

 

 

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.