UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

THIS IS A FINAL ACTION.

 

This letter responds to applicant’s communication filed on August 1, 2008.

 

Status of the Application

 

In the initial Office Action dated December 26, 2006, the examining attorney issued: (1) 2(d) refusals based on US Registration Nos. 2658850 and 2607266, as well as a prior pending advisory for Application Serial No. 78721249; (2) identification of goods requirement; and (3) specimen refusal.  On May 29, 2007, applicant argued against the 2(d) refusals, amended its identification of goods and provided a substitute specimen. 

 

On July 11, 2007, the application was suspended pending the prior pending application, however, the applicant’s amended identification of goods and substitute specimen were accepted. 

 

On February 7, 2008, the prior pending application registered and the examining attorney issued a 2(d) refusal based on US Registration No. 3370388, and continued and maintained the 2(d) refusals based on US Registration Nos. 2658850 and 2607266.

 

On August 1, 2008, applicant argued against the 2(d) refusals.  The examining attorney has carefully reviewed applicant’s arguments and found them unconvincing.  Please note, the 2(d) refusal based on US Registration Nos. 2607266 is hereby withdrawn due to cancellation.  However, the 2(d) refusals based on US Registration Nos. 2658850 and 3370388 are now made FINAL for the reasons set forth below. 

 

SECTION 2(d) REFUSALS – LIKELIHOOD OF CONFUSION - FINAL

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2658850 and 3370388.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

The following factors are the most relevant:  similarity of the marks, similarity of the goods, and similarity of trade channels of the goods.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq. 

 

Comparison of the Marks

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

 

In the instant case, applicant’s mark is “SECUREX” with slight stylization of the lettering.  Registrant’s marks in US Registration Nos. 2658850 and 3370388 are both “SECUREX” in standard character.  A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element itself and not in any particular display.  TMEP §1207.01(c)(iii); see 37 C.F.R. §2.52(a).  Thus, a mark presented in stylized characters or otherwise in special form will not generally avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display.  See, e.g., In re Melville Corp., 18 USPQ2d 1386, 1387-88 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988).

 

As such, the marks are essentially identical in their appearance, sound, connotation and commercial impression, that there is a likelihood of confusion.  Therefore, the similarity prong of the test to determine likelihood of confusion is satisfied.

 

Comparison of the Goods

 

The goods of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

 

Based on the aforementioned standard, the applicant’s goods are closely related to the registrants’ goods and services because it is likely that they would be sold and/or marketed together in the same channels of trade.  Specifically, Registration No. 2658850 for “SECUREX,” is for “electrified exit devices for providing ingress and egress to facilities, comprised of electro-mechanical locks, key-operated electrical switches, electrified hinges, electro-mechanical entry and exit door controls, panic hardware, smoke detectors, alarm horns, timing controls, receivers, transmitters and processors for remote control arming and disarming and components thereof, namely, wire, cable, electrical connectors, terminals and associated circuitry.”  Also, Registration No. 3370388 for “SECUREX” is for “all of the following being electronic and electrical goods not for motor vehicles, namely, locks; electronically operated high security lock cylinders; battery-operated locks and keypad controllers therefor; automatic door operators; key pads; key pad-operated locks; solenoid-operated locks; electrified and electromechanical exit devices for providing ingress and egress to facilities; fire control systems comprised of annunciator panels, detector switches and relays; locks operated by internal computer; power supplies and battery back-ups for power supplies.”

 

Applicant’s goods are for “security fencing systems, namely, metal gates and fencing panels.”   Thus, registrant’s marks comprising of electronic locks, exit devices and other security alarm devices, are closely related to the applicant’s goods for security fencing systems, as all named goods such as locks and gates or fences are often marketed and sold in the same channels of trade.  Please see Internet evidence attached in prior office actions dated December 26, 2006 and February 7, 2008. 

 

Applicant argues that the cited goods travel in different channels of trade because its “goods are simply one component of a security system.  These components are assembled and installed by highly sophisticated security contractors” who “know the difference between  a lock and an expanded metal mesh panel.”

 

However, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).  Indeed it is common to see fences and various locks, exit devices, etc. sold together and/or by common manufacturers.  Please see Internet evidence attached in prior office actions dated December 26, 2006 and February 7, 2008. 

 

Additionally, when the relevant consumer includes both professionals and the general public, the standard of care for purchasing the goods is that of the least sophisticated purchaser.  Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004).

 

Applicant further argues that its “expanded metal mesh panels which are used as anti-personnel and anti vehicle barriers … can not constitute alarm devices.”  Nonetheless, any goods in the registrant’s normal fields of expansion should be considered when determining whether the registrant’s goods are related to the applicant’s goods.  TMEP §1207.01(a)(v); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581 1584 (TTAB 2007).  Evidence that third parties offer the goods of both the registrant and applicant suggest that it is likely that the registrant would expand their business to include applicant’s goods.  In that event, customers are likely to believe the goods at issue come from or, are in some way connected with, the same source.  In re 1st USA Realty Prof’ls, 84 USPQ2d at 1584 n.4; see TMEP §1207.01(a)(v).

 

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 metal gates and fencing panels and electronic locks, exit devices, door operators, door hinges, etc, are of a kind that may emanate from a single source.  In re Infinity Broad. Corp.,60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).

 

Applicant also argues that the “SECUREX marks cannot be considered particularly strong … due to the wide spread use of many SECUREX…”.  However, the Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that marks deemed “weak” or merely descriptive are still entitled to protection against the registration by a subsequent user of a similar mark for closely related goods.  This protection extends to marks registered on the Supplemental Register.  TMEP §1207.01(b)(ix); see, e.g., In re Clorox Co., 578 F.2d 305, 18 USPQ 337 (C.C.P.A. 1978); In re Hunke & Jochheim, 185 USPQ 188 (TTAB 1975).

 

Lastly, both applicant’s and registrant’s marks are “SECUREX” with little or no stylization or other design component to set one apart from the other.  Thus, 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.  In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).

 

Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).

 

Accordingly, because confusion as to source is likely, registration the previously issued 2(d) refusals are made FINAL.

 

Proper Response to Full Refusal

 

If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final Office action by: 

 

(1)     Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)     Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

/tfrazier/

Tamara G. Frazier

Trademark Examining Attorney

Law Office 116

Phone: (571) 272-8256

Fax:  (571) 273-8256

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.