Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FINAL 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. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/607505

 

The examining attorney has reviewed the applicant’s amendments and arguments in favor of registration contained in its response to the first Office action.  The amended identification of goods in International Class 1 has been accepted and entered into the record.  As to the other outstanding issues, the examining attorney has determined as follows.

 

LIKELIHOOD OF CONFUSION REFUSAL MAINTAINED AND MADE FINAL

 

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 in U.S. Registration No. 2411983 as to be likely, when used with the identified goods, to cause confusion, or to cause mistake, or to deceive. A copy of the referenced registration was made of record in conjunction with the first Office action mailed on March 21, 2005.  The applicant’s mark is “USP” for “roofing adhesives” in International Class 1 and “asphalt, bituminous roof coatings” in International Class 19.  The registrant’s mark and design is “USP ULTRA SYSTEM PRODUCTS” for “waterproofing chemical compositions in the form of cementitious and liquid for construction surfaces” in International Class 1 and “interior paint, exterior paint, house paint, wood preservative, rust preservative in the nature of a coating, for the home and commercial building markets, and not for use in the automobile industry” in International Class 2.  The examining attorney’s position is that confusion as to the source of origin or sponsorship is extremely likely if the applicant’s proposed mark is allowed to register.

 

The applicant has argued that there is no likelihood of confusion because it has amended its “description of the goods” and the “goods are now directed to a specific segment of consumers.”[1]   The examining attorney has carefully considered the applicant’s arguments, but has found them unpersuasive.  For the reasons indicated below, the refusal under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d) is MAINTAINED and made FINAL.

 

The applicant has argued that the marks are not likely to be confused because it has amended its “description of the goods” and the “goods are now directed to a specific segment of consumers.”[2]  The applicant is advised that a determination of whether there is a likelihood of confusion is made solely on the basis of the goods services identified in the application and registration, without limitations or restrictions that are not reflected therein.  In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595 (TTAB 1999).  If the cited registration describes the goods broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, as in the case at hand, then it is presumed that the registration encompasses all goods of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639 (TTAB 1981); TMEP §1207.01(a)(iii).

 

The cited registration is for the mark and design “USP ULTRA SYSTEM PRODUCTS.”  The applicant’s mark is “USP.”  The marks are compared in their entireties under a Section 2(d) analysis.  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., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); TMEP §1207.01(b)(viii).  The wording “USP” in the registrant’s mark may be recognized as dominant and most significant in creating a commercial impression, because the average purchaser of goods retains only a vague recollection of marks encountered in marketplace, and this recollection may logically be triggered by the first word of a mark, especially if it is word or term not frequently encountered in similar marketing experiences. See Tony Lama Company, Inc. v. Anthony Di Stefano, 206 USPQ 176 (TTAB 1980).  Said dominant wording and the wording “USP” that comprises the applicant’s proposed mark is identical in sound, appearance, meaning and commercial impression.  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).

 

The literal portion, “USP,” of both marks is identical in appearance, sound and commercial impression.  Accordingly, the addition of the design element to the registrant’s mark does not obviate the similarity between the marks.  In re Shell Oil Company, 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975); TMEP §§1207.01(b)(viii) and 1207.01(c)(ii).

 

If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).  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 or 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).

 

The registered mark is used in connection with “waterproofing chemical compositions in the form of cementitious and liquid for construction surfaces” in International Class 1 and “interior paint, exterior paint, house paint, wood preservative, rust preservative in the nature of a coating, for the home and commercial building markets, and not for use in the automobile industry” in International Class 2.  The applicant’s proposed mark will be used in connection with “roofing adhesives” in International Class 1 and “asphalt, bituminous roof coatings” in International Class 19.  Likelihood of confusion is determined on the basis of the goods or services as they are identified in the application and the registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).  Since the identification of the registrant’s goods in Class 1 is very broad (“waterproofing chemical compositions in the form of cementitious and liquid for construction surfaces”), it is presumed that the registration encompasses all goods of the type described including waterproofing adhesives for roofing construction surfaces as in the applicant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re Optica International, 196 USPQ 775 (TTAB 1977); TMEP §1207.01(a)(iii).  Additionally, since the identification of the registrant’s goods in Class 19 is very broad (“rust preservative in the nature of a coating, for the home and commercial building markets, and not for use in the automobile industry”), it is presumed that the registration encompasses all goods of the type described in including the roof coatings in the applicant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re Optica International, 196 USPQ 775 (TTAB 1977); TMEP §1207.01(a)(iii).  

 

Please see also the attached Internet evidence which has probative value to the extent that it serves to suggest that the goods advertised/listed therein, namely “roof adhesives and roof coatings” and “construction waterproofing composition and rust preservatives in the nature of coatings,” are of a kind that may emanate from a single source.  Printouts of articles downloaded from the Internet are admissible as evidence of information available to the general public.  TMEP §710.01(b).   In re Total Quality Group Inc., 51 USPQ2d 1474, 1475-76 (TTAB 1999); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370-1 (TTAB 1998).

 

Based on all of the foregoing,  the refusal under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d) is MAINTAINED and made FINAL.

 

REQUIREMENT FOR AMENDED IDENTIFICATION OF GOODS IN INTERNATIONAL CLASS 19 MAINTAINED AND MADE FINAL

 

In the first Office action, the examining attorney indicated that, in the identification of goods, the applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  TMEP §§1402.01 and 1402.03(a).  The examining attorney also indicated that the application listed the goods, “adhesives and coatings for use in roofing applications” and classified all of such goods in International Class 1 and explained that the wording in the identification of goods was unacceptable as indefinite and the goods could be classified in more than one class. Additionally, the examining attorney made the following suggestions concerning the applicant’s identification and classification of goods: “roofing adhesives” in International Class 1 and “_______________ (specify type of coatings, e.g., asphalt, bituminous) roof coatings” in International Class 19.

In its response, the applicant has added Class 19 to its application and proposed the following amendment to the identification:

“Asphalt, bituminous roof coatings” in International Class 19.

For the following reasons, the requirement for an amended Class 19 identification is MAINTAINED and made FINAL.

The proposed amended identification in Class 19 is unacceptable as indefinite and requires clarification.  TMEP section 1402.01.  Specifically the wording “asphalt, bituminous roof coatings” is ambiguous, as it is unclear whether the applicant’s proposed goods are “asphalt” AND “bituminous roof coatings” or whether the applicant’s proposed goods are “asphalt roof coatings” and “bituminous roof coatings.”  If the applicant’s proposed goods are “asphalt” and “bituminous roof coatings,” the applicant is advised that the proposed amendment to the identification cannot be accepted because the wording "asphalt" refers to goods that are not within the scope of the identification that was set forth in the application at the time of filing.  While the identification of goods may be amended to clarify or limit the goods, additions to the identification or a broadening of the scope of the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §§1402.06 et seq. and 1402.07.  Therefore, this wording should be deleted from the identification.

The examining attorney is aware that the first Office action contained the following suggested amended identification in Class 19:

 “_______________ (specify type of coatings, e.g., asphalt, bituminous) roof coatings” in International Class 19.

However, the applicant should note that the parenthetical information “(specify type of coatings, e.g., asphalt, bituminous)” proposed by the examining attorney was in the nature of a directional signal indicating that the applicant should specify asphalt roof coatings AND/OR bituminous roof and was not a suggestion that the applicant should amend its identification to literally adopt the proposed wording “asphalt, bituminous roof coatings.”  To follow is the examining attorney’s suggestion concerning the applicant’s identification of goods in Class 19.  The applicant may amend the application pursuant to the examining attorney’s suggestion, if accurate:

 

“Asphalt roof coatings and bituminous roof coatings” in International Class 19.

 

It is strongly recommended that the applicant review the Office’s Trademark Manual of Acceptable Identifications and Classifications for Goods and Services which is available on-line at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual.  For a detailed discussion of this Office's authority and rationale for requiring a specific identification of goods or services in an application, see Skoler, Trademark Identification ‑ Much Ado About Something?, 76 Trademark Rep. 224 (1986).

 

While an application may be amended to clarify or limit the identification of goods, 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 the present identification.

 

OPTIONS WITH RESPECT TO FINAL REFUSAL

 

Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board.  37 C.F.R. Section 2.64(a).  If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned.  37 C.F.R. Section 2.65(a).

 

/Sonya B. Stephens/

Trademark Attorney

Law Office 109

(571) 272-9352 phone

(571) 273-9109 fax*

*fax no. for official responses only

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.