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. 

 

 

Serial Number  76/583988

 

The applicant’s standard character claim and translation of the mark have been entered into the file.

 

The search on the merits was deferred pending a response to the previous office action.  The search has been conducted and the following issues are now raised.

 

PENDING APPLICATIONS

The examining attorney encloses information regarding pending Application Serial Nos. 76133905; 76453277; 76511652; 76529237; 76537316 and 76546757.  37 C.F.R. §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 one or more of these earlier‑filed applications matures into a registration, the examining attorney may refuse registration under Section 2(d).

 

 

SECTION 2(D) LIKELIHOOD OF CONFUSION REFUSAL

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 marks in U.S. Registration Nos. 2697123 and 2460755  as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  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 (CCPA 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).

 

 

The applicant uses its mark FUTURA on goods identified as “non-electric pressure cookers; non-cookware comprising pots and pans; small domestic utensils comprising spatulas, steaming stands and pressure cooker accessories; material for cleaning utensils comprising brushes and scrubbers.”  The registrant in Registration No. 2697123 uses its mark FUTURA on goods identified as “Stainless steel cookware, namely, stock pots, sauce pans, frying pans, saute pans, braziers and covers for the foregoing.”  The registrant in Registration No. 2460755 uses its mark FUTURA on goods identified as “commercial food processing equipment, namely, food blanchers, food pasteurizers, and hydrochillers; commercial food processing equipment, namely, food coolers.”

 

Comparison of the Marks

The applicant’s mark is identical to both registrant’s marks.

 

The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  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).

 

Comparison of the Goods/Services

If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).  TMEP §1207.01(a). 

 

The applicant’s goods include related cooking items and identical items, namely, pots and pans to the goods in Registration No. 2697123.  The registrant in Registration No. 2460755 uses its goods on food blanchers.  The applicant’s steamers and pressure cookers are similar goods to the registrants goods.

 

Because of the similarity between the applicant’s and registrant’s marks and because the marks are used on  the same and on related goods consumers are likely to mistakenly believe that the  goods come from the same source.  For these reasons registration of the applicant’s mark is refused in accordance with Section 2(d) of the Trademark Act.

 

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.

 

BASIS AND FOREIGN REGISTRATION

The applicant appears to be amending the application to 1(b) and to 44(e).  However, the submitted foreign registration does not support all of the goods identified in the application.  The foreign registration only supports the “pressure cookers.”  The applicant may claim 44(e) as the basis for the pressure cookers and 1(b) for the remainder of the goods. 

 

Applicant may assert more than one basis in the application, provided that the applicant satisfies all requirements for each basis claimed. 37 C.F.R. §2.34(b); TMEP §§806.02 et seq.

 

Applicant may also allege different bases for different international classes of goods and services, and may allege different bases as to specific goods and/or services within a class. However, if applicant chooses to assert different bases in the same application, then applicant must clearly state that it is claiming more than one basis, and must separately list each basis, followed by the goods and/or services to which that basis applies. If some or all of the goods or services are covered by more than one basis, this must be stated. 37 C.F.R. §§2.34(b)(2) and 2.35(f).

 

The following wording in the identification of goods and/or services in the application is unacceptable because it exceeds the scope of the goods and/or services in the foreign application or registration:  non-cookware comprising pots and pans; small domestic utensils comprising spatulas, steaming stands and pressure cooker accessories; material for cleaning utensils comprising brushes and scrubbers" in International Class 21.  37 C.F.R. §2.32(a)(6).  Applicant must therefore do one of the following:

 

(1)      amend the identification of goods and/or services in the application to correspond to the goods and/or services identified in the foreign application or registration; or

(2)      delete the Section 44 basis for the goods and/or services beyond the scope of the foreign application or registration and rely solely on the 1(b) basis for those goods and/or services. 

 

15 U.S.C. §1051(b); 37 C.F.R. §§2.32(a)(6) and 2.34(b); TMEP §§806.02 et seq., 1012 and 1402.01(b); see Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843 (TTAB 1989); In re Lowenbrau München, 175 USPQ 178 (TTAB 1972). 

 

The applicant must clearly indicate which basis is for which goods.

 

APPLICATION NOT SIGNED

The application must be signed, and verified or supported by a declaration under 37 C.F.R. Section 2.20.  37 C.F.R. Section 2.33.  No signed verification or declaration was provided.  Therefore, the applicant must provide a signed verification or signed declaration attesting to the facts set forth in the application, and attesting that applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date.  37 C.F.R. Sections 2.34(a)(2)(1), (a)(3)(i) and (a)(4)(ii).

 

The requirement that the applicant submit a signed verification or declaration is maintained.

 

IDENTIFICATION AND CLASSIFICATION OF GOODS

The wording "non-electric pressure cookers”  and “spatulas” in the current identification is acceptable in Class 21.

 

The wording “non-cookware comprising pots and pans” in the identification of goods is unacceptable as indefinite.  The wording “non-cookware” is unclear.  The applicant may amend this wording to “non-electric cookware, namely, pots and pans,” if accurate.  TMEP §1402.01.

 

The wording “steaming stands” is unclear and the wording “pressure cooker accessories” is not specific enough.  The applicant must list the specific accessories.

 

The wording “small domestic utensils comprising spatulas, steaming stands and pressure cooker accessories” in the identification of goods is unacceptable as indefinite.  The applicant may amend this wording to “small domestic utensils, namely, spatulas, non-electric cooking steamers and pressure cooker accessories, namely, (list by common commercial name),” if accurate.  TMEP §1402.01.

 

The wording “brushes and scrubbers” is indefinite.  The applicant must indicate a more specific type of brush or scrubber.  The applicant may adopt the following, if accurate:  material for cleaning utensils, namely, scrubbing brushes and scraping brushes and scrub sponges.

 

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.

 

 

NOTICE:  FEE CHANGE   

 

Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:

 

(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or 

 

(2)   $375 per international class if filed on paper

 

These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be  $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.

 

The new fee requirements will apply to any fees filed on or after January 31, 2005.

 

NOTICE:  TRADEMARK OPERATION RELOCATION

 

The Trademark Operation has relocated to Alexandria, Virginia.  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, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.

 

 

/Kelley L. Wells/

Kelley L. Wells

Trademark Attorney

Law Office 105

571-272-9312

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action issued via email you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• 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 in your response.

 

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.