Offc Action Outgoing

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  76/567859

 

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. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods, so resembles the marks in U.S. Registration Nos. 1660870 and 2812701 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registrations.

 

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. 

 

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 §1207.01(b).

 

The goods and 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 and 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).  TMEP §1207.01(a)(i). 

 

In the present case, the applicant has applied to register the mark TAGALONG (with design) for self-contained vehicular transport modules, namely portable barbecue grills, portable barbecue grill and cooler combinations, portable food storage and preparation stations, portable tailgating stations, portable tool storage stations, portable catering stations, portable camping equipment carriers, portable construction tool sheds, portable medical equipment stations, portable emergency response units, and portable general storage units; and Portable barbecue grills, portable barbecue grill and cooler combinations, and portable tailgating stations.  The registered marks are TAG-ALONG for ice chests and TAG A LONG for portable gas heaters.

 

The respective marks are comprised in whole or significant part of the term TAGALONG.  Such a term is arbitrary and distinctive as used in connection with the identified goods.  Consequently, the marks share the same over-all sound, appearance and commercial impression.  In addition, the goods identified by the applicant may encompass the goods identified in the registrations.  Thus, the examining attorney must conclude that it is highly foreseeable that customers of the registrants might encounter the applicant’s goods and mark in the marketplace given the similar channels of trade within which the identified goods travel.  Therefore, confusion as to source of origin or sponsorship is likely to occur.

 

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.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988); Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).  TMEP §§1207.01(d)(i). 

 

Please note the additional basis to refuse registration.

 

Application Not Entitled to Register

The examining attorney encloses information regarding pending Application Serial No. 78283721.  The filing date of the referenced application precedes the applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §1208.01.

 

Other Issues

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 – Partial Refusal

The identification of goods is unacceptable because it is indefinite.  In particular, the applicant lists goods in more than two international classes.  In the present case, the drawing page lists goods that the applicant classified in international class 11.  In the body of the application the applicant lists goods classified in international class 12, among others.  The applicant paid one fee and authorized the Office to deduct any additional required fees.  The examining attorney added this one international class from the applicant attorney’s deposit account.  Unfortunately, the identification remains indefinite because goods contained within these two classes may belong in more than the two paid classes.

 

The applicant must provide greater specificity with regard to “portable food storage and preparation stations”, “portable tailgating stations”, “portable tool storage stations”, “portable catering stations”, “portable camping equipment carriers”, “portable medical equipment stations”, “portable emergency response units” and “portable general storage units.”  For example, the applicant may need to specify the material composition of goods and list the principal components of all kits or units that are all sold together. 

 

The applicant may want to review the Acceptable Identification of Goods and Services Manual available in a searchable format free of charge at the USPTO website, http://www.gov.uspto.report/web/offices/tac/doc/gsmanual. 

 

Please note that failure to address this issue shall result in all specified indefinite terms being deleted from the identification.  The applicant may adopt two of the following identifications, if accurate:

International class 5 – portable medical equipment stations, namely first aid kits.

Or

International class 6 – portable general purpose metal storage units.

Or

International class 9 – portable medical equipment stations, namely emergency auto kits comprised of a hand held spotlight and battery charger; emergency flares; emergency signal transmitters and emergency warning lights.

Or

International class 11 – self-contained vehicular transport modules, namely portable barbecue grills, portable barbecue grill and cooler combinations.

Or

International class 12 – car-top portable camping equipment carriers.

Or

International class 19 - portable non-metal construction tool storage sheds.

Or

International class 20 – portable tool storage stations, namely plastic storage containers.

Or

International class 21 – combination portable food storage containers and preparation stations, namely countertops sold as a unit therewith; portable catering stations, namely portable cooking kits for outdoor use.

Or

International class 22 - portable tailgating stations, namely canopy for attachment to motor vehicles for tailgating purposes.

 

TMEP §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. §2.71(a); TMEP §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.

 

Multiclass Application

In the alternative, the applicant may adopt more than two identifications above and proceed as a multiple class application.  If the applicant prosecutes this application as a combined, or multiple‑class, application based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods in each class and list the classes in ascending numerical order.  TMEP §1403.01.

 

(2)  The applicant must submit a filing fee for each international class of goods not covered by the fee already paid.  37 C.F.R. §§2.6(a)(1) and 2.86(b); TMEP §§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: 

 

(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. §§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), where such statement was not included for the goods or services in the original application.

 

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

 

Specimen Missing

An application based on use of the mark in commerce under Trademark Act Section 1(a), 15 U.S.C. Section 1051(a), must include a specimen showing use of the mark in commerce on or in connection with the goods/services.  The application does not contain a specimen.  The applicant must submit a specimen, and must submit the following statement:

 

The specimen was in use in commerce at least as early as the filing date of the application.

 

This statement must be verified with an affidavit or a declaration under 37 C.F.R. Section 2.20.  37 C.F.R. Section 2.71(d)(1).  The following is a properly worded declaration under 37 C.F.R. Section 2.20.

 

The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true.

 

 

                                                                                    _____________________________

                                                                                                            (Signature)

                                                                  

 

                                                                                    _____________________________

                                                                                    (Print or Type Name and Position)

 

                                                                                    _____________________________

                                                                                                            (Date)

 

 

Drawing Does Not Reproduce Satisfactorily

Applicant must submit a new drawing showing the entire mark clearly and conforming to 37 C.F.R. §2.52.  The current drawing is not acceptable because it contains shades of gray and it will not reproduce satisfactorily.  TMEP §807.07(a).

 

NOTE:  The Trademark Rules pertaining to drawings were amended on November 2, 2003.  For applications filed prior to November 2, 2003, applicants may follow either the new special form drawing rules or the special form drawing rules in force prior to their amendment on November 2, 2003.  Exam Guide 01-03, section I.B.6.

 

Drawing Requirements - Post-November 2, 2003

For Drawings Filed on Paper

The requirements for a special-form drawing are as follows:

 

·        The drawing must appear in black and white if color is not claimed as a feature of the mark, or in color if color is claimed as a feature of the mark.

 

·        Drawings must be typed or made with a pen or by a process that will provide high definition when copied.  A photolithographic, printer’s proof copy, or other high quality reproduction of the mark may be used.  All lines must be clean, sharp and solid, and must not be fine or crowded.

 

·        The image must be no larger than 3.15 inches (8 cm) high by 3.15 inches (8cm) wide.

 

·        If reduction of the mark to the required size renders any details illegible, then applicant may insert a statement in the application to describe the mark and these details.

 

37 C.F.R. §§2.52(b); See TMEP §§807.01(b) and 807.07(a).

 

If submitted on paper, the Office prefers that the drawing be depicted on a separate sheet of non-shiny, white paper that is 8 to 8.5 inches wide and 11 to 11.69 inches long (20.3 to 21.6 cm. wide and 27.9 to 29.7 cm. long).  One of the shorter sides of the sheet should be regarded as its top edge. In addition, the drawing should include the caption “DRAWING PAGE” at the top of the drawing beginning one-inch (2.5 cm) from the top edge.  37 C.F.R. §2.54.

 

The Office strictly enforces these drawing requirements.

 

For Drawings Filed through TEAS (electronically)

To submit a special form drawing electronically, applicant must attach a digitized image of the mark to the submission.  The Office will only accept an image in .jpg format.  The image must be formatted at no less than 300 dots per inch and no more than 350 dots per inch; and with a length and width of no less than 250 pixels and no more than 944 pixels.  All lines in the image must be clean, sharp and solid, and not fine or crowded, and produce a high quality image when copied.  37 C.F.R. §2.53.

 

Lining/Stippling/Color – Paper and TEAS Drawings

Applicant must clarify whether the gray tones in the drawing are intended to indicate the color gray.

 

(1)   If the color gray is a feature of the mark, then applicant must submit a color claim and description as follows:  “The color gray is a feature of the mark.  The color gray appears in <specify where color gray appears>.”  37 C.F.R. §§2.52(b) and (b)(1).

 

(2)   If the color gray is intended to indicate shading only, then applicant must submit a new drawing showing the mark in black and white only, with the gray tones deleted.

 

(3)    If the applicant intends to show gray as a color through color lining, then the applicant must submit a statement that the lining in the drawing indicates the color gray.  37 C.F.R. §2.37; TMEP §807.09(e).  If the lining is a feature of the mark, the applicant must submit a statement that the lining shown in the drawing is a feature of the mark.  37 C.F.R. §2.37; TMEP §807.09(e).

 

(4)    If the applicant intends to show gray tones through stippling, then the applicant must submit a statement that the stippling in the drawing is for shading purposes only.  37 C.F.R. §2.37; TMEP §807.09(e).  If the stippling is a feature of the mark, the applicant must submit a statement that the stippling shown in the drawing is a feature of the mark.  37 C.F.R. §2.37; TMEP §807.09(e).

 

Color Claim and Color Description of the Mark – Paper and TEAS Drawings

Applicant must submit the following:  (1) a statement that “the color(s) <specify> <is/are> claimed as a feature of the mark;” and (2) a separate description of where the colors appear in the mark, i.e., “the color(s) <name of color(s)> appear in <specify portion of the mark on which color(s) appear>.”  37 C.F.R. §2.52(b)(1).  Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue.  Exam Guide 01-03, section I.B.1.

 

Drawing Unacceptable – Non-Registrable Material

The drawing contains non-registrable matter, namely, the ™ symbol.  The applicant must amend the drawing to exclude any reference to the ™ symbol in the drawing of the mark.  TMEP §807.04.

 

Description of the Mark

The applicant must submit a concise description of the mark.  37 C.F.R. Section 2.35; TMEP § 808 et seq.  If accurate, the applicant may adopt the following description:

            The mark consists in part of a stylized grill with flame design combines to form a highly stylized human form.

 

Response Guidelines

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.  No set form is required for response to this Office action.  The applicant must respond to each point raised.  The applicant should simply set forth the required changes or statements and request that the Office enter them.  The applicant must sign the response.

 

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

 

 

/Gene V.J. Maciol/

Gene V.J. Maciol

Trademark Attorney Advisor

Law Office 103

703 746 8103 fax

703 308 9103 x295

 

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 may correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

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.