UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

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  76/542522

 

FINAL OFFICE ACTION

 

This letter responds to the applicant’s response filed on September 16, 2004.  Please note that all issues not discussed in this office action have been resolved.

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 892,839 as to be likely, when used with the identified goods, to cause confusion, or to cause mistake, or to deceive.  The examining attorney has considered the applicant’s arguments carefully but found them unpersuasive.  Accordingly, the refusal under Section 2(d) of the Trademark Act is hereby maintained and made FINAL. 

 

In addition, the applicant was required to submit a proper claim of ownership of its prior registrations.  The applicant failed to sufficiently comply with this requirement.  Accordingly, this requirement is maintained and made FINAL.

 

Argument for Refusal of Registration Under § 2(d)

 

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 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 seeks to register the mark T SERIES for “centrifugal pumps.”  The registered mark is T-LINE for “centrifugal pumps, particularly for handling corrosive fluids, and parts thereof. 

 

            Similarity of the Marks

 

Similarity in appearance is one factor in determining whether there is a likelihood of confusion between marks.  Marks may be confusingly similar in appearance despite the addition, deletion or substitution of letters or words.  See, e.g., Weiss Associates Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (TMM held confusingly similar to TMS, both for systems software); Canadian Imperial Bank of Commerce, N.A., v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH held likely to be confused with COMMUNICASH, both for banking services); In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1987) (TRUCOOL for synthetic coolant held likely to be confused with TURCOOL for cutting oil).  TMEP §1207.01(b)(ii).

 

Here, the applicant’s mark is T SERIES and the registered mark is T-LINE.  The addition of the descriptive word SERIES to the applicant’s mark and the addition of the descriptive term LINE to registered mark do not obviate a finding that the applicant’s mark is confusingly similar in appearance, connotation and overall commercial impression to the registered mark.  It is notable that the connotation of the words LINE and SERIES is confusingly similar.  The applicant’s mark indicates that it has a series of centrifugal pumps identified as the T series, while the registered mark indicates that it has a LINE of centrifugal pumps identified as the T line of pumps.  The applicant should note the attached definitions of SERIES and LINE indicating that SERIES and LINE have synonymous meanings when used to refer to a grouping of like tools or products.

 

Furthermore, the evidence submitted by the applicant is noted but not persuasive.  Most of the evidence submitted is for completely unrelated goods.  In the few registrations submitted in which the goods are similar or related, the letter T alone, is not the dominant element in the mark as in both the applicant’s mark and the registered mark.  In this case, both the applicant and registrant use the letter T, alone, to designate a series or line of centrifugal pumps. 

 

            Comparison of Goods

 

The goods of the parties are identical.  Both parties have centrifugal pumps.  Thus, because of the similarity in appearance, connotation and overall commercial impression of the applicant’s mark and the registered mark, and because the goods of the applicant and registrant are identical, purchasers encountering those goods are likely to mistakenly believe they are provided by a common source.  Accordingly, the refusal under Section 2(d) of the Trademark Act is maintained and made FINAL.

 

Prior Registration

 

In the previous office action, the applicant was required to correct a typographical error in its claim of ownership of its prior registration.  However, in the applicant’s response, there appears to be another typographical error in the registration number.  A digit is missing.  Thus, the requirement that the applicant claim ownership of Registration No. 2,560,336 is hereby maintained and made FINAL.

 

The applicant must withdraw the claim of Registration No. 2,56,336.

 

Notice:  Trademark Operation Relocating October And November 2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

Responding to a Final Office Action

 

If the 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).  The 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).

 

 

 

 

/Stacy B. Wahlberg/

Trademark Attorney

Law Office 113

(571) 272-9441

LO Fax (571) 273-9113

 

 

How to respond to this Office Action:

 

You may respond formally using the Office's Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://eteas.gov.uspto.report/V2.0/oa242/WIZARD.htm and follow the instructions therein, but you must wait until at least 72 hours after receipt if the office action issued via e-mail).  PLEASE NOTE: Responses to Office Actions on applications filed under the Madrid Protocol (Section 66(a)) CANNOT currently be filed via TEAS.

 

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.

se·ries

 
se·ries (sîr¹êz) noun

plural series

Abbr. ser.

1.    A number of objects or events arranged or coming one after the other in succession.

2.    Physics & Chemistry. A group of objects related by linearly varying successive differences in form or configuration: a radioactive decay series; the paraffin alkane series.

3.                     Mathematics. The sum of a sequentially ordered finite or infinite set of terms.

4.    Geology. A group of rock formations closely related in time of origin and distinct as a group from other formations.

5.    Grammar. A succession of coordinate elements in a sentence.

6.    a. A succession of usually continuously numbered issues or volumes of a publication, published with related authors or subjects and similar formats. b. A succession of regularly aired television programs, each one of which is complete in and of itself.

7.    a. Sports. A number of games played one after the other by the same opposing teams. b. Baseball. The World Series.

8.    Linguistics. A set of vowels or diphthongs related by ablaut, as in sing, sang, sung, and song.

 

— idiom.

in series

In an arrangement that forms a series.

 [Latin seriês, from serere, to join.]

 Synonyms: series, succession, progression, sequence, chain, train, string. These nouns denote a number of things placed or occurring one after the other. Series refers to like, related, or identical things arranged or occurring in order: a series of days; a series of facts. A succession is a series whose elements follow each other, generally in order of time and without interruption: a succession of failures. A progression is a series that reveals a definite pattern of advance: a geometric progression. In a sequence things follow one another in chronological or numerical order or in an order that indicates a causal or logical relationship or a recurrent pattern: a natural sequence of ideas. Chain suggests a series of things that are closely linked or connected: the chain of command; a chain of proof. Train can apply to a procession of people, animals, or vehicles or to a sequence of ideas or events: a train of mourners; my train of thought. A string is a continuous series or succession of similar or uniform elements likened to objects threaded on a long cord: a string of islands; a string of questions.

 Usage Note: Series is both a singular and a plural form. When it has the singular sense of “one set,” it takes a singular verb, even when series is followed by of and a plural noun: A series of lectures is scheduled. When it has the plural sense of “one or more sets,” it takes a plural verb: Two series of lectures are scheduled: one for experts and one for laypeople.[1]

ine1

 
line (lìn) noun

Abbr. l.

1.    The path traced by a moving point.

2.    a. A thin continuous mark, as that made by a pen, pencil, or brush applied to a surface. b. A similar mark cut or scratched into a surface. c. A crease in the skin, especially on the face; a wrinkle.

3.    a. A real or imaginary mark positioned in relation to fixed points of reference. b. A degree or circle of longitude or latitude drawn on a map or globe. c. The equator. Used with the.

4.    a. A border or boundary: the county line. b. A demarcation: a line of darker water beyond the reef. c. A contour or an outline: the line of the hills against the evening sky.

5.    a. A mark used to define a shape or represent a contour. b. Any of the marks that make up the formal design of a picture.

6.    a. A cable, rope, string, cord or wire. b. Nautical. A rope used aboard a ship. c. A fishing line. d. A clothesline. e. A cord or tape used, as by builders or surveyors, for measuring, leveling, or straightening.

7.    A pipe or system of pipes for conveying a fluid: gas lines.

8.    An electric-power transmission cable.

9.    a. A wire or system of wires connecting telephone or telegraph systems. b. An open or functioning telephone connection: tried to get a free line.

10.  a. A passenger or cargo system of public or private transportation, as by ship, aircraft, or bus, usually over a definite route. b. A company owning or managing such a system.

11.  a. A railway track or system of tracks. b. A particular section of a railway network: the Philadelphia-Trenton line.

12.  A course of progress or movement; a route: a line of flight.

13.  a. A general method, manner, or course of procedure: different lines of thought; took a hard line on defense. b. A manner or course of procedure determined by a specified factor: development along socialist lines. c. An official or prescribed policy: the party line.

14.  Often lines . A general concept or model: a trilogy along the lines of the Oresteia.

15.  A condition of agreement; alignment: brought the front wheels into line; a wage agreement in line with current inflation.

16.  a. One's trade, occupation, or field of interest: What line of work are you in? b. Range of competence: not in my line.

17.                     Merchandise or services of a similar or related nature: carries a complete line of small tools.

18.  A group of persons or things arranged in a row or series: long lines at the box office; a line of stones.

19.  a. Ancestry or lineage. b. A series of persons, especially from one family, who succeed each other: a line of monarchs; comes from a long line of bankers. c. A strain, as of livestock or plants, developed and maintained by selective breeding.

20.  a. A sequence of related things that leads to a certain ending: a line of argument. b. An ordered system of operations that allows a sequential manufacture or assembly of goods at all or various stages of production. c. The personnel of an organization or a business who actually make a product or perform a service.

21.  a. A horizontal row of printed or written words or symbols. b. One of the horizontal scans forming a television image.

22.  A brief letter; a note: I'll drop you a line.

23.  a. A unit of verse ending in a visual or typographic break and generally characterized by its length and meter: a line of iambic pentameter. b. Often lines . The dialogue of a theatrical presentation, such as a play: spent the weekend learning her lines.

24.  Informal. Glib or insincere talk, usually intended to deceive or impress: He kept on handing me a line about how busy he is.

25.  lines Chiefly British. a. A marriage certificate. b. A usually specified number of lines of prose or verse to be written out by a pupil as punishment.

26.  Games. A horizontal demarcation on a scorecard in bridge dividing the honor score from the trick score.

27.  a. A source of information. b. The information itself: got a line on the computer project.

28.  a. Music. One of the five parallel marks constituting a staff. b. A sustained melodic or harmonic part in a piece: a rock song with a driving bass line.

29.  a. A formation in which elements, such as troops, tanks, or ships, are arranged abreast of one another. b. The battle area closest to the enemy; the front. c. The combat troops or warships at the front, arrayed for defense or offense. d. The regular forces of an army or a navy, in contrast to staff and support personnel. e. The class of officers in direct command of warships or of army combat units. f. A bulwark or trench. g. An extended system of such fortifications or defenses: the Siegfried line.

30.  Sports. a. A foul line. b. A real or imaginary mark demarcating a specified section of a playing area or field. c. A real or imaginary mark or point at which a race begins or ends. d. The center and two wings making up a hockey team's offensive unit.

31.  Football. a. A line of scrimmage. b. The linemen considered as a group.

32.  Informal. The odds a bookmaker gives, especially for sports events.

33.  a. A kind of coverage available in insurance. b. The proportion of an insurance risk assumed by a particular underwriter or company.

34.  Slang. A small amount of cocaine arranged in a thin, usually tightly rolled strip for sniffing.

35.  Archaic. One's lot or position in life.

 

verb

lined, lin·ing, lines verb, transitive

1.    To mark, incise, or cover with a line or lines.

2.    To represent with lines.

3.    To place in a series or row.

4.    To form a bordering line along: Small stalls lined the alley.

5.    Baseball. To hit (a ball) sharply, usually in a straight line.

 

verb, intransitive

Baseball.

To hit a line drive: lined out to shortstop.

 

— phrasal verb.

line up

1.    To arrange in or form a line.

2.    To organize and make ready: lined up considerable support for the bill.

 

— idiom.

all along the line

1.    In every place.

2.    At every stage or moment.

down the line

1.    All the way; throughout: Errors are to be found down the line.

2.    At a point or an end in the future.

in line for

Next in order for: in line for the presidency.

on the line

1.    Ready or available for immediate payment.

2.    So as to be risked; in jeopardy: “Careers were on the line once again” (Seymour M. Hersh).

out of line

1.    Uncalled-for; improper.

2.    Unruly and out of control.

 [Middle English, from Old English lìne and from Old French ligne, both from Latin lìnea, feminine sing. of lìneus, of linen, from lìnum, thread, linen.][2]