UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/650875
APPLICANT: Ames Research Laboratories, Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: AMES
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CORRESPONDENT’S REFERENCE/DOCKET NO: 4781-72595-0
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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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 76/650875
This letter responds to applicant’s communication filed on September 5, 2006. The amendment to seek registration on the Supplemental Register is acceptable and has been entered into record. Upon further review and consideration, the examining attorney has determined the following.
Section 2(d) - Likelihood of Confusion Refusal – International Class 17
The examining attorney thanks applicant for pointing out in its response that the cited registration’s number was incorrectly noted in the previous Office action. The examining attorney herein clarifies this information and responds to applicant’s argument.
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because applicant’s mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2837824 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. 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 (C.C.P.A. 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). TMEP §§1207.01 et seq.
Applicant seeks to register “AMES” for use on, among other things, “lightweight seam tapes and adhesive peel and stick seam tapes for use in connection with concrete, metal, and wood; non-metal roof fabrics; elastomeric rubber sheets for exterior and interior surfaces; adhesive sealant and caulking compound for interior and exterior surfaces; rubber sealant for caulking and adhesive purposes for roof, wall and deck waterproofing; semi-finished acrylic molded plastic substances, for use in waterproofing roofs, walls and decks; acrylic-based sealants and adhesives for interior and exterior surfaces for construction, particularly for use in glazing, siding and trim.”
The registered mark is “AMES” for “joint tape used in drywall and wallboard construction.”
Applicant’s and the registrant’s marks are identical. If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).
Furthermore, applicant’s and the registrant’s goods are closely related, because they both include adhesive products for use in interior construction.
The goods 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). TMEP §1207.01(a)(i).
In its response, applicant argues that its goods and the registrant’s goods are:
significantly different in that joint tape is used for drywall and wallboard and mainly known for construction, whereas the seam tape sold under the mark of the application is used mainly for concrete and metal, and in connection with paint, rather than “mudding” as used in the drywall industry. Additionally, the purpose of applicant’s seam tape is to provide reinforcement over areas prone to splitting, such as seams or joints, and create a “bridge” that ties the surfaces together so water cannot seep through. Seam tape of the reference is used around roof vents, on flashings, over cracks and gaps, along the seams on metal or RV roofs.
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 applicant’s goods is very broad (for exterior as well as interior construction unless otherwise indicated), it is presumed that the application encompasses all goods of the type described, including those in the registrant’s more specific identification (for drywall and wallboard construction), that they move in all normal channels of trade and that they are available to all potential customers. TMEP §1207.01(a)(iii).
Attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods as those of applicant and registrant in this case. These printouts have probative value to the extent that they serve to suggest that the goods listed therein, namely drywall and/or wallboard joint tapes and adhesive sealant, caulking compounds, rubber sealant for adhesive purposes and adhesives for construction use, are of a kind that may emanate from a single source. See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).
The same consumers will be exposed to the goods identified with both marks. The similarities between the marks and the goods of the parties are so great as to create a likelihood of confusion. The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark that is totally dissimilar to trademarks already being used. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988). TMEP §§1207.01(d)(i).
Applicant’s mark closely resembles the registrant’s mark and the goods identified by these marks are closely related. When used on these goods, applicant’s mark may cause confusion or mistake to the ordinary consumers as to the source of such goods in relation to the registrant’s mark.
Based on the above discussion, the refusal to refuse registration of applicant’s mark is therefore maintained and continued.
The likelihood-of-confusion refusal refers to Class 17 only and does not bar registration in the other class.
Although the examining attorney has refused registration, applicant may respond to the refusals to register by submitting evidence and arguments in support of registration. If applicant chooses to respond to the refusal to register, applicant must also respond to the following issues.
Classification
Applicant classified the goods “non-metal roof fabrics” in International Class 17; however, the correct classification is International Class 19, and the goods should be further specified as “non-metal roof fabric coverings.” Applicant must either delete these goods or add International Class 19 to the application. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).
Combined Applications
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 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. TMEP §1403.01.
(2) Applicant must submit a filing fee for each international class of goods not covered by the fee already paid. 37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.
(3) Applicant must submit:
(a) dates of first use of the mark anywhere and dates of first use of the mark in commerce; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(l)(i), 2.34(a)(1 )(ii) and 2.86(a)(3);
(b) one specimen showing use of the mark for each class of goods; the specimen(s) must have been in use in commerce at least as early as the filing date of the application; 37 C.F.R. §§2.34(a)(1)(iv) and 2.86(a)(3); and
(c) both the dates of use and a statement that "the specimen was in use in commerce at least as early as the filing date of the application" must be verified in a notarized affidavit or a signed declaration under 37 C.F.R. §2.20; 37 C.F.R. §§2.59(a) and 2.71(c).
The applicant’s claim of ownership of Registration No. 1886816 will not be printed on any registration which may issue from this application because the registration is unrelated to this application. TMEP §812.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/Dawn Han/
Trademark Examining Attorney
Law Office 107
(571) 272-9432
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.