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  76/629387

 

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

 

I.                    REFUSAL OF REGISTRATION UNDER SECTION 2(d)

 

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2355886.  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 Du Pont 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. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). 

 

Applicant has applied for registration of the mark PRODYNE.  The registered mark is PRODYN.  The marks are virtually identical in appearance, sound and connotation.

 

In the second part of a likelihood of confusion analysis, 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 goods are identified as follows:  “heat exchangers, heat exchanger cores, radiators, radiator cores, radiators for agricultural machinery and tractors, charge air cooler cores, oil coolers, condensers for agricultural machinery and trucks, heaters and heater cores, charge air coolers, intercoolers, aftercoolers, radiators for portable air compressors, diesel electric generators and industrial machinery cooling, radiator tanks, automotive air conditioning components namely, condensers, evaporators, compressors, clutches for compressors, dryers, filters, blowers, fan clutches, and hose and tube assemblies.”  The goods named in the registration are “automotive parts used in steering and drive shaft systems, namely, boots for constant velocity joints, rack and pinions, struts and proposhafts.”

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  Instead, 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/or services come from a common source.  On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i). 

 

In the present case, the goods of the parties are both used in automobiles and could clearly be encountered by and utilized by the same class of purchasers.  Moreover, The Trademark Trial and Appeal Board has generally held that marketing by different parties of different types of automotive parts and accessories under the same or similar marks is likely to cause confusion.  See In re Jeep Corporation, 222 USPQ 333, 334 (TTAB 1984) (citing Monarch Mufflers, Inc., v. Goerlick's, Inc., 148 USPQ 20 (TTAB 1965) (MONARCH for brake linings for automotive use likely to cause confusion with MONARCH for exhaust mufflers for motor vehicles); AP Parts Corp. v. Automotive Products Associated, 156 USPQ 254 (TTAB 1967) (AP for clutches, brakes, steering joints, tie-rod joints, and suspension joints for land vehicles, aircraft or watercraft likely to cause confusion with AP for mufflers for explosive engines); Sieberling Rubber Co. v. General Battery and Ceramic Corp., 167 USPQ 766 (TTAB 1964) (HOLIDAY for storage batteries likely to cause confusion with HOLIDAY for pneumatic rubber tires and automobile floor mats); In re Market Tire Co. of Maryland, Inc., 171 USPQ 636 (TTAB 1971) (ADMIRAL for vehicle tires likely to cause confusion with ADMIRAL for radiator antifreeze); In re Uniroyal, Inc., 177 USPQ 29 (TTAB 1973) (KODIAK for vehicle tires likely to cause confusion with KODIAK and design for antifreeze and KODIAK for automobile heaters); In re Magic Muffler Service, Inc., 184 USPQ 125 (TTAB 1984) (MAGIC for vehicle parts, namely mufflers likely to cause confusion with MAGIC for motors for motor vehicles); In re Trelleborgs Gummifabriks Aktiebolag, 189 USPQ 106 (TTAB 1975) (T and design for, inter alia, hoses, namely rubber hoses and inner tubes for tires and pneumatic, semisolid and solid tires likely to cause confusion with T and design for, inter alia, motor oil, oil additives and fuel additives); In re Red Diamond Battery Co., 203 USPQ 472 (TTAB 1979) (RED DIAMOND for storage batteries likely to cause confusion with DIAMOND for pneumatic rubber automobile and vehicle tires); In re Delbar Products, Inc., 217 USPQ 859 (TTAB 1981) (ULTRA for outside mounted vehicle mirrors likely to cause confusion with ULTRA and design for automobile parts, namely pistons and pins, valves, water pumps, oil pumps, universal joints, gears, axle shafts, hydraulic brake parts, automatic transmission repair kits and parts, engine bearings and jacks).

 

Accordingly, based on the almost identical nature of the marks and the strong relationship of the goods of the parties, confusion as to the source of the goods is likely.

 

Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

 

II.                 REQUIREMENTS

 

1.)   IDENITIFCATION / CLASSIFICATION OF GOODS

 

The identification of goods is unacceptable in its entirety because it combines goods that are classified in more than one international class.  Moreover, none of the goods specified appear to be classified in International Class 12, as stated by applicant.  Additionally, most of the items identified by applicant are indefinite in that the exact nature of the goods is unclear and therefore must be clarified to allow for proper description and classification of the goods.  The examining attorney outlines below suggested wording for each item, including the proper classification therefor – as follows:

 

CLASS 7

Radiators and radiator cores for [SPECIFY motors, vehicles, or engines]

Radiators for agricultural machinery and tractors

Charge air cooler cores for vehicle engines

Vehicle engine parts, namely, oil coolers

Air condensers for agricultural machinery and trucks

Intercoolers for automotive engines

Aftercoolers for automotive engines

Radiators for portable air compressors for vehicles

Radiator tanks for motors or engines

Radiators for diesel electric generators

Automotive air conditioning compressors and fan clutches and filters therefor

 

CLASS 11

Heat exchangers, heat exchanger cores

Automotive air conditioning components, namely, condensers, evaporators, blowers, driers, and hose and tube assemblies

Radiators and radiator cores for industrial air conditioning

[SPECIFY gas, electric or hot water] heaters and heater cores

Charge air conditioning coolers

Radiators for portable air compressors, not for motors and engines

Radiators for industrial machinery cooling

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

NOTE:  Applicant must rewrite the identification(s) of goods in its entirety because of the nature and extent of the amendment.  37 C.F.R. §2.74(b).

 

Please also 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.

 

2.)   REQUIREMENTS FOR COMBINED APPLICATIONS

 

As indicated above, the application identifies goods that may be classified in two international classes.  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.

 

 

 

 

 

 

/Martha Santomartino/

Trademark Attorney

Law Office 112

(571) 272-9416

 

 

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 has been 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.