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  76/560527

 

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

 

Refusal of Registration: Likelihood of Confusion

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 1363243 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

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 be considered in determining whether there is a likelihood of confusion under Section 2(d).  Any one of the factors listed may be dominant in any given case, depending upon the evidence of record.  In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods, and similarity of trade channels of the goods.

 

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).  The examining attorney must look at the marks in their entireties under Section 2(d).  Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is 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).  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 second step requires that the examining attorney 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 the present case, applicant seeks to register Z-AIR for “permanganate treated air filter media.”  The registered mark is the highly similar Z-PAK and design for “air filters for residential, commercial and industrial uses.”  The dominant feature of both marks is the letter "Z".  The general impression retained by the average consumer would be the letter "Z" for a air filter product.  It is unlikely that the consumer would remember the differences between the two marks.

 

The registrant and applicant both use their highly similar marks for filter-related goods.

 

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 that is totally dissimilar to trademarks already being used.  Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).

 

Thus, for the reasons stated above, the examining attorney must refuse registration under Trademark Act Section 2(d).  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 informalities.

 

Standard Character Claim Required

Applicant must submit the following standard character claim:  “The mark is presented in standard character format without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a).

 

Identification of Goods Indefinite

The identification of goods is unacceptable as indefinite.  Applicant must clarify the identification of goods by more specifically describing its permanganate treated air filter media.  TMEP §1402.01.  The applicant must amend the identification of goods to indicate whether the goods consist of air filters or integral components of air filters and the general type of application of the air filter.  If the applicant’s goods are sold separately for use in making air filers, the applicant must indicate the material content of the goods.

 

The applicant may adopt any or all of the following identification, if accurate:

 

            Air filters for, [indicate use, e.g., for air conditioning units, domestic use, industrial installations], comprised of a permanganate treated air filter media; permanganate treated air filer media sold as an integral component of air filters for [indicate use, e.g., for air conditioning units, domestic use, industrial installations], in international class 11;

            Permanganate treated air filter media comprised of [specify material content, e.g., glass fiber], in international class 17.

TMEP section 1402.01.

 

Please note that, 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(a); 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.

 

The applicant is strongly encouraged to consult the Acceptable Identification of Goods and Services Manual.  The Manual is available on the PTO's "homepage" on the Internet, which can be accessed at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.  TMEP Section 1404.04.  The Acceptable Identification of Goods and Services Manual sets out acceptable language for identifying goods and services of various types.  Utilizing identification language from the Manual may enable trademark owners to avoid problems relating to indefiniteness with respect to the goods or services identified in their applications for registration; however, applicants should note that they must assert actual use in commerce or a bona fide intent to use the mark in commerce for the goods or services specified.  TMEP Section 1404.04.

 

Applicant Must Restrict Classes of Goods/Services or Pay Additional Fee

The application identifies goods/services that may be 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) prosecute the application as a multiple-class application.  37 C.F.R. Section 2.86(b); TMEP sections 810.01 and 1403.01.

 

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/services in each class and list the goods/services by international class with the classes listed in ascending numerical order.  TMEP section 1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services 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 1403.01.  Effective January 1, 2003, the fee for filing a trademark application is $335 for each class.  This applies to classes added to pending applications as well as to new applications filed on or after that date. 

 

(3)  The applicant must submit either: 

 

(a) dates of first use and first use in commerce in each class and one specimen for each class.  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, 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.

 

(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).

 

Proper Response to Office Action

A response to this Office action requires no set form.  The applicant, however, must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.

 

Any response must be signed.  If the applicant is using an attorney for this application, the attorney must sign the response.  37 C.F.R. §10.18(a).  If the applicant is not represented by an attorney, the response must be signed by someone with legal authority to bind the applicant (e.g., an appropriate corporate officer or general partner of a partnership).  A non-attorney who is authorized to verify facts on behalf of an applicant under 37 C.F.R. §2.33(a)(2) (See TMEP §804.04) is not entitled to sign responses to office actions, or to authorize examiner’s amendments and priority actions, unless he or she has legal authority to bind the applicant.  TMEP section 712.01.

 

In all correspondence to the Patent and Trademark Office, the applicant should list the name and law office of the examining attorney, the serial number of this application, the mailing date of this Office action, and the applicant's telephone number.

 

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

 

 

 

/Rudy Singleton/

Examining Attorney, Law Office 102

(703) 308-9102 ext. 266

 

 

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

 

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