Offc Action Outgoing

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. 

 

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  76/640599  E-TEC

 

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

 

I.  LIKELIHOOD OF CONFUSION - in Part Class 12:

 

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 in Class 12, so resembles the mark in U.S. Registration No. 2,971,578 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registration.

 

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).

 

-  COMPARISON OF THE 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).  A comparison of the applicant’s mark E-TEC and the registered mark E-TEC shows that the marks are identical in every element sound, appearance, and meaning and, thus, overall commercial impression.

 

-  COMPARISON OF THE GOODS/SERVICES – Class 12:

 

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 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 applicant’s Class 12 goods in and the registrant’s goods are related in that they are often sold together and travel along the same channels of trade.  If similar goods travel in the same channels of trade under similar marks, confusion as to source is likely.  In particular, confusion is even greater where consumers are accustomed to the goods being sold under the ‘same’ marks.  Attached is a sampling of registered marks for both engines and their structural parts and structural parts for boats, thus clearly indicating that these goods emanate from a common source and are offered under the same marks in trade.  Therefore, the applicant’s Class 12 goods are highly likely to be encountered by the same purchasers of the registrant’s goods.

 

Please note:  If the applicant deletes Class 12 and does not otherwise amend the remaining services to cause a potential conflict with the registered mark, the examining attorney will withdraw this refusal.

 

II.  PRIOR PENDING APPLICATION:

 

The examining attorney encloses information regarding pending Application Serial No. 78/307,481.  The filing date of the referenced application precedes the applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application matures into a registration, the examining attorney may refuse registration in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §1208.01.

 

If the applicant chooses to respond to the Section I refusal to register, the applicant must also respond to the following informalities.

 

III.  IDENTIFICATION OF GOODS/SERVICES – Indefinite in part:

 

The identification of services is unacceptable as indefinite in part because it lacks sufficient specificity and because the services fall into additional classes.  TMEP §§1402.01 and 1402.03(a).  Accordingly, applicant may adopt the following identification, if accurate:

 

-         Marine fabrication services, namely, construction of __________ (please specify, for example, boats, boat docks, etc.), in International Class 37;  and

 

-         Marine fabrication services, namely, manufacturing of __________ (please specify, for example, boats, boat parts, etc.) to order and/or specification of others, in International Class 40.

 

Please note, the identification of goods is acceptable as filed in Class 12.

 

For aid in selecting acceptable identifications of goods and services and determining proper classification, the searchable Manual of Acceptable Identifications of Goods and Services is available on the PTO website at www.uspto.gov.

 

Please also 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 or services that are not within the scope of the goods and services recited in the present identification.

 

IV.  CLASSIFICATION OF GOODS/SERVICES:

 

If the applicant adopts the suggested amendment to the identification of goods/services, the applicant must amend the classification to International Classes 12, 37 & 40.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§805 and 1401 et seq.

 

V.  ADDITIONAL CLASSES:

 

If the applicant prosecutes this application as a combined, or multiple‑class, application, the applicant must comply with each of the following:

 

(1)  The applicant must specifically identify the goods/services in each class and list the goods/services by international class with the classes listed in ascending numerical order (as listed above).  TMEP section 1113.01.

 

(2)  The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid.  37 C.F.R. Sections 2.6(a)(1) and 2.86(b); TMEP sections 810.01 and 1113.01.  The applicant has already paid for two classes.

 

(3)  The applicant must submit: 

 

(a) USE:  dates of first use and first use in commerce and one specimen for each class that includes goods or services based on use in commerce under Trademark Act Section 1(a).  The dates of use must be at least as early as the filing date of this application, 37 C.F.R. Sections 2.34(a)(1) and 2.86(a), and the specimen(s) must have been in use in commerce at least as early as the filing date of the application.

 

Please note, the specimens submitted with the application are acceptable for all Classes, however, the applicant must either list the respective dates of first use for each Class(es) added or confirm if they are the same as the ones already provided; and/or (if applicable)

 

(b) INTENTION TO USE:  a statement of a bona fide intention to use the mark in commerce on or in connection with all the goods or services specified in each class that includes goods or services based on a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), where such statement was not included for the goods or services in the original application.  The following is a properly worded statement:

 

The applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application since the filing date of the application.

           

(4)  The applicant must submit an affidavit or a declaration under 37 C.F.R. Section 2.20 signed by the applicant to verify (3) above.  37 C.F.R. Sections 2.59(a) and 2.71(c).

 

DECLARATION:

 

The following is a properly worded declaration under 37 C.F.R. Section 2.20 to support the requirements for this Section.  At the end of responses to the issues raised in this Section, the applicant should submit this declaration signed by a person properly authorized to sign on behalf of the applicant.

 

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)

 

 

 

VI.  DRAWING - Standard Character Claim Required:

 

Applicant must submit the following standard character claim:

 

“The mark is presented in standard character format without claim to any particular font style, size, or color.”  37 C.F.R. §2.52(a).

 

This statement is required for all applications filed on or after November 2, 2003, in which an applicant is requesting protection equivalent to that previously afforded to typed or word marks.  As such, the designation ‘Standard Character Mark’ effective replaces ‘typed or word mark.’  Please see Exam Guide 01-03 for changes to the drawing rules.

 

VII.  CONCLUSION:

 

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

 

/KaranChhina/

Karanendra S. Chhina

Trademark Attorney

Law Office 114

(571) 272-9447

 

 

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.