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  76/652154

 

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

 

SECTION 2(d) REFUSAL

 

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2646291.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.

 

Trademark Act Section 2(d) bars registration where an applied-for mark so resembles a registered mark that it is likely, when applied to the goods and/or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods and/or services.  TMEP §1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression, and the relatedness of the goods and/or services.  The overriding concern is to prevent buyer confusion as to the source of the goods and/or services.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as to the existence of a likelihood of confusion must be resolved in favor of the registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974).

 

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.

 

Comparison of Marks

 

Applicant's proposed mark, DEGREE, is identical in sound, appearance and meaning to registrant's mark, DEGREE.  Thus the commercial impression created by applicant's proposed mark is the same as that created by registrant's mark.

 

If the marks of the respective parties are identical, the relationship between the goods 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).

 

Comparison of Goods and Services

 

Applicant seeks to register DEGREE for “stone and tile care products, namely-- finishes, impregnators, slip resistant impregnators, sealers, conditioners, hardeners, waxes, oils, polishes, cleaner fluids, cleaner wipes, stain removers, stain remover poultices, film removers, paint removers, varnish removers, mildew removers, rust removers and strippers; and stone maintenance, stone repair, stone restoration and stone preservative chemicals” in Class 3, and “retail, wholesale and catalog distributorship services in the field of stone and tile care products” in Class 35.  Registrant uses its mark on “Herbicides for agricultural and domestic use.”  The respective goods and services are highly related and are commonly found in the same trade channels. The average consumer who encounters these marks on such highly related goods and services would mistakenly believe that a common source provided the goods and services. Thus, there is a likelihood of confusion, and registration must be refused pursuant to Section 2(d) of the Trademark Act.

 

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 “herbicides” and stone and tile cleaners, are of a kind that may emanate from a single source.  In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001), citing In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).

 

Moreover, consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGG’S for retail grocery and general merchandise store services held confusingly similar to BIGGS for furniture); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE (stylized) for retail women’s clothing store services and clothing held likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); In re United Service Distributors, Inc., 229 USPQ 237 (TTAB 1986) (design for distributorship services in the field of health and beauty aids held likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB for various items of men’s, boys’, girls’ and women’s clothing held likely to be confused with THE “21” CLUB (stylized) for restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (STEELCARE INC. for refinishing of furniture, office furniture, and machinery held likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (use of similar marks for trucking services and on motor trucks and busses is likely to cause confusion). Thus, there is a likelihood of confusion between applicant’s distributorship services and registrant’s goods because applicant’s proposed distributorship services feature products which are confusingly similar to registrant’s goods.

 

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 chooses to respond to the refusal to register, the applicant must also respond to the following requirements. Resolution of the issues discussed below is essential but is not, alone, sufficient to overcome the foregoing refusal.

 

IDENTIFICATION OF GOODS AND SERVICES

 

The identification of goods is unacceptable because it does not clearly identify the goods and refers to goods in additional classes. TMEP §1402.01.  In particular,

 

• The wording “finishes” in Class 3 is indefinite and requires clarification. The applicant must specify the nature of the goods, i.e. that it is a “floor finishing preparation.”
• The wording “impregnators, slip resistant impregnators, sealers” is indefinite and requires clarification. The applicant must specify the common commercial name for the goods or the nature of the goods and classify accordingly, i.e. Sealer coatings for use on stone and tile surfaces.  If applicant chooses to amend the identification, applicant must correct the classification of the sealer and amend the application to classify the goods in International Class 2.   37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).  In the alternative, applicant can delete the language from the identification of goods.
• The word “conditioners” is indefinite and requires clarification. The applicant must specify the common commercial name for the goods or the nature of the goods and classify accordingly. In the alternative, applicant may delete the language from the identification.
• The word “hardeners” is indefinite and requires clarification. The applicant must specify the common commercial name for the goods or the nature of the goods and classify accordingly. In the alternative, applicant may delete the language from the identification.
• The word “waxes” is indefinite and requires clarification. The applicant must specify the common commercial name for the goods, i.e. floor wax.
• The word “oils” is indefinite and requires clarification. The applicant must specify the common commercial name for the goods or the nature of the goods and classify accordingly. In the alternative, applicant may delete the language from the identification.
• The word “cleaner fluids, cleaner wipes” is indefinite and requires clarification. The applicant must specify the common commercial name for the goods or the nature of the goods and classify accordingly. In the alternative, applicant may delete the language from the identification.
• Applicant must correct the classification of the stain remover poultices and amend the application to classify the goods in International Class 5.   37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).  In the alternative, applicant can delete the language from the identification of goods.
• The wording “mildew removers” is indefinite and requires clarification. The applicant must specify the nature of the goods and classify accordingly. Furthermore, applicant must correct the classification of the goods and amend the application to classify the goods in International Class 5.   37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).  In the alternative, applicant can delete the language from the identification of goods.
• The word “strippers” is indefinite and requires clarification. The applicant must specify whether the goods are “paint strippers.”
• The wording “stone maintenance, stone repair, stone restoration and stone preservative chemicals” is indefinite and requires clarification. The applicant must specify whether the goods are “Chemical preservatives for use on stone,” and classify accordingly. See the suggested language below.

 

The applicant must amend the identification to specify the common commercial name of the goods and the nature of the services.  TMEP §1402.01. The applicant may adopt the following formats, if accurate:

 

Chemical preservatives for use in stone maintenance, stone repair and stone restoration, in International Class 1.

 

Sealer coatings, and slip resistant sealer coatings, for use on stone and tile surfaces, in International Class 2.

 

Cleaners for use on stone and tile surfaces, namely, floor finishing preparation, floor wax, polishers, stain removers, film removers, paint removers, varnish removers, rust removers and paint strippers, in International Class 3

 

Stain remover poultices; Preparations to destroy mildew, in International Class 5.

 

Retail, wholesale and catalog distributorship services in the field of stone and tile care products, in International Class 35.

 

For assistance with identifying and classifying 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.

 

Please 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 and services that are not within the scope of goods and services set forth in the present identification.

 

Please also note that parentheticals are not acceptable in the identification. TMEP §1402.12. Where indicated “[specify … ],” the examining attorney has merely suggested ways to cure the indefiniteness of the identification. The applicant must list the goods and services without parentheses.

 

MULTI-CLASS ADVISORY

 

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.

 

 

/Roberto Ledesma/

Trademark Examining Attorney

Law Office 113

Phone: (571) 272-8848

Fax: (571) 273-9113

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• 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.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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.