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  76/549628

 

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

 

Likelihood of Confusion

 

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, so resembles the mark in U.S. Registration Nos. 2,535,506 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  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 (CCPA 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).  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).

 

In this case, the applicant applied to register the mark AUTOMASTER (in typed form) for “automotive service equipment, namely, trouble lights, hydraulic jacks, jack stands, creepers, tool boxes and tool trays.”

 

The registered mark is AUTO MASTERS (with a design and the additional wording DEDICATED TO THE DETAILS) for “auto and truck repair and maintenance service.”

 

With regard to the first step in the likelihood of confusion analysis, the parties’ marks are highly similar, with both sharing the essentially identical AUTO MASTER(S) wording.  It is emphasized in this regard that the display of this wording in singular versus plural form, or as one word versus two words, does not affect the identical commercial impression created by the wording in both marks.

 

Moreover, the fact that the registered mark contains a design element and some additional wording does not remove the similarity of the marks.  While the examining attorney must look at the marks in their entireties under Section 2(d), one feature of a mark may nevertheless be recognized as more significant in creating a commercial impression, and greater weight is thus given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser's memory and to be used in calling for the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).  Similarly, the extra wording DEDICATED TO THE DETAILS in the registrant’s mark is an additional slogan that is not the dominant wording in that mark.  In other words, consumers seeing the registrant’s mark would still recognize and call for the services as  AUTO MASTERS, regardless of the additional wording and design in the mark.

 

In this regard, the examining attorney notes that 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).

 

With regard to the second step in the analysis, the goods or services 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/services 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).

 

In this case, the examining attorney finds that the parties’goods and services are closely related, with the applicant marketing the types of automotive service equipment that are used in connection with the services provided by the registrant.

 

Accordingly, it is the examining attorney’s conclusion that the similarities between the marks and the goods/services of the parties are so great as to create a likelihood of confusion among consumers.  The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant, who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

 

The examining attorney also notes the following potential refusal.

 

Prior Pending Applications – For The Applicant’s Information At This Time

 

The examining attorney also encloses information regarding pending Application Serial Nos. 76/521455 and 76/521456 (both owned by a single party).  37 C.F.R. Section 2.83. 

 

There may be a likelihood of confusion between the applicant's mark and the marks in the above noted applications under Section 2(d) of the Act.  The filing dates of the referenced applications precede the applicant's filing date.  If either or both of the earlier‑filed applications mature into a registration, the examining attorney may refuse registration under Section 2(d) with regard to these marks as well.

 

No response by the applicant is currently required with regard to this issue.

 

 

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.

 

Identification of Goods

 

The identification of goods is indefinite and also identifies goods in more than one class.  Specifically:

 

(1) The first item – “trouble lights” – must be clarified by amending to “automobile trouble lights, namely, emergency warning lights.”  Such goods are properly classified in Class 9 because of their safety purpose.

 

(2) The next item – “hydraulic jacks” – is acceptably worded.  However, such goods are properly classified in Class 7.

 

(3) The next item – “jack stands” – must be amended to clarify whether the stands are for hydraulic jacks or hand jacks.  Either (or both, if the applicant is marketing various types of stands) of the following would be acceptable:

 

            Class 7:         Stands for hydraulic jacks

 

            Class 8:         Stands for hand jacks

 

(4) The next item – “creepers” – must be clarified by amending to “mechanics’ creepers.”  Moreover, such goods are separately classified in Class 12.

 

(5) The last two items – “tool boxes and tool trays” – must be amended to indicate the composition of the goods, as this affects proper classification.  Any of the following would be acceptable:

 

            Class 6:         Metal tool boxes and tool trays

 

            Class 20:       Non-metal tool boxes and tool trays

 

The examining attorney also notes that if the applicant adds additional classes to cover any of the above goods, then the applicant must also ensure that each class of goods is introduced as “automobile service equipment” or otherwise includes wording indicating that the goods are for use with automobiles – with such clarification necessary to ensure that the amendment is within the scope of the original wording.  While an application may be amended to clarify or limit the identification, 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 goods set forth in the present identification.

 

Classification of Goods

 

As just discussed above, the application identifies goods that are classified in several international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of classes covered by the fee already paid, or (2) pay the required fee for each additional class.  37 C.F.R. Section 2.86(b); TMEP sections 810.01 and 1113.01.  The filing fee is currently $335 per class. 

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods in each class and 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.  As already mentioned, the filing fee is $335 per class. 

 

(3)  The applicant must submit either: 

 

(a) dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application.  37 C.F.R. Sections 2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application, and/or

 

(b) a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b).

 

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. Section 2.20 signed by the applicant to verify (3) above.  37 C.F.R. Sections 2.59(a) and 2.71(c).

 

Ownership of Prior Registration

 

It appears that the applicant is the owner of U.S. Reg. No. 2,136,423, for the mark AUTO MASTER for various automobile alarms – with the name of the owner of that registration being identical to the applicant in this case (although the addresses are different).

 

Accordingly, the applicant must confirm for the record whether it is the owner of this registration.  If so, the applicant must enter a claim of ownership.  TMEP §812.  The following standard format should be used:

 

            The applicant is the owner of U.S. Reg. No. 2,136,423

 

Specimen

 

The applicant filed based on use in commerce under Section 1(a), and indicated in the application that a specimen was being submitted with the application.  However, no specimen was included at the time of filing.  A specimen showing use of the mark in commerce for the identified goods is required for an application based on use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a). 

 

Accordingly, the applicant must submit:  (1) a specimen (i.e., an example of how applicant actually uses its mark in commerce for the goods listed in the application) showing the mark as it is used in commerce; and (2) a statement that “the specimen was in use in commerce at least as early as the filing date of the application,” verified with a notarized affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.59(a); TMEP §904.09.

 

Examples of acceptable specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.04 et seq.

 

 

 

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

 

  /Elizabeth A. Hughitt/

/Elizabeth A. Hughitt/

Examining Attorney

Law Office 111

(703) 308-9111 x 250

 

 

 

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 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