UNITED STATES PATENT AND TRADEMARK OFFICE

 

EXAMINER’S AMENDMENT/PRIORITY 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.  If applicant responds to the issues below within two months of the above mailing or e-mailing date, this case will be given priority handling. 

 

OFFICE RECORDS SEARCH:  The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  TMEP §704.02.

 

Serial Number 76/632605

 

EXAMINER'S AMENDMENT

 

AMENDMENT(S) AUTHORIZED:  As authorized by Thomas O. Hoover, Esq., on October 3, 2005, the application is amended as noted below.  If applicant disagrees with or objects to any of the amendments below, please notify the undersigned trademark examining attorney immediately.  Otherwise, no response is necessary.  TMEP §707.   

 

The following standard character drawing claim is added to the record:

 

The mark consists of standard characters without claim to any particular font, style, size, or color.

 

37 C.F.R. §2.52(a); TMEP §807.03(a).

 

PRIORITY ACTION

 

Applicant must respond to each refusal and/or requirement raised below.  If applicant responds to the issues below within two months of the above mailing or e-mailing date, this case will be given priority handling.  TMEP §§708.01 and 708.05.

 

Registration refused - likelihood of confusion

 

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 1359880.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.

 

A likelihood of confusion determination requires 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).  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 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.

 

The applicant seeks to register EXTRACTION for use on “apparatus, namely, gas filtering systems, gas filters, gas monitoring systems, and gas control systems, for use in the gas, semiconductor, electronics, photolithography, integrated circuit, and integrated optical systems industries, and parts, fittings and components for the aforesaid goods.”

 

The registered mark is EXTRACTOR.  The applicant uses it on “compressed air filters and vapor traps, and replacement cartridges therefor, for pneumatic systems.”

 

EXTRACTION and EXTRACTOR share the seven letters E-X-T-R-A-C-T.  These themselves form a familiar word.  EXTRACTION means the process of removal and EXTRACTOR means that which removes.  See Attachments 4, 5 and 6.  The marks thus mean about the same and look about the same.  They also sound about the same for the first two of their three syllables, long enough to create an overall impression of similarity.  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, 40, 108 USPQ 161 (D.C. Cir. 1956) (internal citation omitted).

 

As shown by Attachment 3, “air” is a gas.  Therefore, the examining attorney must consider the registrant’s “air filters” to be equivalent to applicant’s “gas filters.”  Moreover, there are no industry restrictions in the registration nor exclusions of use in pneumatic systems in the application.  The presumption under Trademark Act Section 7(b), 15 U.S.C. §1057(b), is that the registrant is the owner of the mark and that use of the mark extends to all goods and/or services identified in the registration.  The presumption also implies that the registrant operates in all normal channels of trade and reaches all classes of purchasers of the identified goods and/or services.  In re Melville Corp., 18 USPQ2d 1386, 1389 (TTAB 1991); McDonald’s Corp. v. McKinley, 13 USPQ2d 1895, 1899 (TTAB 1989); RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964-5 (TTAB 1980).

 

In a nutshell, registration is refused because the applicant’s plan to market goods that are legally identical to the registrant’s, bearing a virtually identical mark, will lead to consumer confusion. 

 

Applicant should note the following additional ground for refusal.

 

Registration refused - merely descriptive mark

 

Registration is refused on the Principal Register because the proposed mark merely describes the purpose of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq.

 

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b). 

 

Attachment 7 indicates the purpose of a filter is “to extract.”  Thus the proposed mark immediately names the process in which the goods are used.  Attachments 8, 9 and 10 are registrations that illustrate that terms in  marks which name processes are deemed merely descriptive.

 

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. 

 

As to the second refusal, the record indicates that applicant has used its mark for a long time; therefore, applicant may seek registration on the Principal Register under Trademark Act Section 2(f), 15 U.S.C. §1052(f), based on acquired distinctiveness.  To amend the application to Section 2(f) based on five years use, applicant should submit the following written statement claiming acquired distinctiveness, if accurate:

 

The mark has become distinctive of the goods through applicant’s substantially exclusive and continuous use in commerce for at least the five years immediately before the date of this statement.

 

Applicant must verify this statement with a notarized affidavit or a signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §2.41(b); TMEP §1212.05(d).

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following matters.  Resolution of the below mentioned informalities is essential but is not, alone, sufficient to overcome the foregoing refusals.

 

Identification

 

The term “gas filtering systems,” “gas monitoring systems” and “gas control systems” in the identification of goods is unclear and requires clarification.  Applicant must rewrite the goods by listing the major parts or components of the systems and describing the nature, purpose and use of the system.  Applicant should use common generic terms when specifying the parts and/or components of the system.  TMEP §1402.03.  When the applicant has specified the components of the systems, the identification may also include “replacement parts and components for the aforesaid goods.

 

“Gas filters,” as illustrated by the specimen, is acceptable.  When an applicant has submitted an unacceptable identification of goods and/or services, it is Office practice to suggest acceptable substitute wording.  In this case, however, the trademark examining attorney is unable to suggest substitute wording because the nature of the goods and/or services is unclear from the application record.  TMEP §1402.01(e).

 

The applicant may wish to consult the Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html for suggestions.

 

Options in prosecution

 

Applicant must clarify the number of classes for which registration is sought.  The submitted filing fees may be insufficient to cover all the classes in the application.  It is possible the systems may fall into different international classes, depending on the classification of their principal components.  Therefore, the applicant must either:  (1) restrict the application to the single class covered by the fee already paid, or (2) pay the required fee for each additional class.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.  Current fees are at http://www.gov.uspto.report/web/offices/ac/qs/ope/fee2005jul01.htm#tm

 

If applicant prosecutes this application as a combined, or multiple‑class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)   Applicant must list the goods by international class with the classes listed in ascending numerical order;

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid; and

 

(3)   For each additional class of goods and/or services, applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;

 

(c)    a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

 

(d)   verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20.  (NOTE:  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

 

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810, 904.09, 1403.01 and 1403.02(c).

 

Please note that the specimen of record is acceptable for class 11 only.

 

The following is a properly worded declaration:

 

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 the facts set forth in this application are true; 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)

 

If the declaration is filed electronically through TEAS, then applicant should sign the declaration by entering a “symbol” that applicant has adopted as a signature (e.g., /john doe/, /drl/, and /544-4925/).  The Office will accept any combination of letters, numbers, spaces and/or punctuation marks as a valid signature if it is placed between two forward slash (“/”) symbols.  37 C.F.R. §§ 2.33(d) and 2.193(c)(1)(iii); TMEP §§304.08 and 804.05.

 

If applicant submits a response via electronic means, please note that the substitute specimen must be a digitized image submitted in .jpg format.  37 C.F.R. §2.56(d)(4); TMEP §904.02.

 

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

 

Sincerely,

/Melvin T. Axilbund/

 

Melvin T. Axilbund

Examining Attorney, Law Office 113

melvin.axilbund@uspto.gov

571/272-9424

 

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