UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/618340
APPLICANT: CYRO Industries
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: PUREGUARD
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CORRESPONDENT’S REFERENCE/DOCKET NO: 60845
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/618340
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
Section 2(d) - Likelihood of Confusion Refusal
Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2062079. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration.
Taking into account the relevant DuPont factors, a likelihood of confusion determination in this case involves a two-part analysis. First, the marks are compared 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). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b).
Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely. In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.
Applicant’s mark PUREGUARD is highly similar to cited mark PURGARD. They are similar in appearance where they share all the same letters in the same order, absent the letters “E” and “U” in cited mark. Further, the marks are phonetic equivalents and are thus are identical in sound. Similarity in sound alone may be sufficient to support a finding of likelihood of confusion. RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963); TMEP §1207.01(b)(iv). When applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.” Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956). Because the similarities and sound and appearance between PUREGUARD and PURGARD are so great, the marks are found highly similar.
In comparing the goods, applicant’s goods for “packaging for acrylic polymer” include registrant’s goods for “lined tubular glass containers for use in diagnostic and pharmaceutical drug packaging.” Registrant’s goods of “lined tubular glass containers for use in…packaging” are a type of packaging. Further, it is feasible that diagnostic and pharmaceutical drug packaging uses acrylic polymers in diagnostic kits or pharmaceutical bottles. Therefore, registrant’s goods fall within applicant’s goods, and the goods are identical.
Because applicant’s mark is highly similar to cited mark for identical goods, such that consumers would likely be confused as to source, registration is refused based upon Trademark Act Section 2(d), 15 U.S.C. §1052(d).
Identification of Goods & Classification
The current wording “packaging for acrylic polymer” used to describe the goods needs clarification because it does not specify the form of packaging and the material of the packaging, and further it is uncertain whether applicant meant for the word “for” to instead be the word “of,” which would indicate the goods are made of acrylic polymer. Applicant may adopt the following identification of goods, if accurate: “acrylic polymer bags for packaging” in IC 016, “acrylic polymer bubble packs for packaging” in IC 016, “Expanded acrylic polymer plastic pellets for packaging” in IC 017, “acrylic polymer films used as packaging for food” in IC 017, “acrylic polymer flexible packaging film sold in bulk to industrial and commercial manufacturers” in IC 017, “acrylic polymer containers, namely, tubs for consumer products packaging” in IC 020, or “acrylic polymer netting for packaging goods” in IC 022. TMEP §1402.01.
If applicant adopts any of the above suggested amendment of the goods, then applicant must potentially amend the classification to include International Classes 017, 020, and/or 022. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
Combined Applications
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):
(1) Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order. TMEP § 1403.01; and
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov). 37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.
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.
Ada P. Han
/Ada P. Han/
Trademark Attorney
Law Office 106
(571) 272-5873
(571) 273-9106 (fax)
HOW TO RESPOND TO THIS OFFICE ACTION:
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.