Offc Action Outgoing

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 outcome of the prior pending application. However, the applicant’s amended identification of goods and substitute specimen were accepted and entered into the record.

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. On September 3, 2008, the examining attorney withdrew the 2(d) refusal based on US Registration No. 2607266 due to cancellation. However, the 2(d) refusals based on US Registration Nos. 2658850 and 3370388 were made FINAL.

On April 22, 2009, applicant filed a request for reconsideration of the refusal to register, and on May 15, 2009, the request for reconsideration was denied.

On July 30, 2009, applicant filed its appeal brief, and the file was forwarded to the examining attorney for statement.

III. ISSUE ON APPEAL

The issue on appeal is whether the proposed mark, SECUREX (stylized), when used in connection with the identified goods, so resembles the marks in US Registration Nos. 2658850 and 3370388, “SECUREX” (typed drawing and standard character, respectively), as to be likely to cause confusion, to cause mistake, or to deceive under Trademark Act Section 2(d).

IV. ARGUMENTS

BECAUSE THE MARKS WILL BE APPLIED TO RELATED GOODS, REGISTRATION OF THE MARK SECUREX, WHICH IS NEARLY IDENTICAL TO REGISTRANT’S SECUREX MARKS, IS LIKELY TO CREATE CONSUMER CONFUSION AS TO SOURCE.

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 or services 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. Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the goods. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); TMEP §§1207.01 et seq. The overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); TMEP §1207.01(d)(i).

1. SIMILARITY OF THE MARKS: THE MARKS ARE NEARLY IDENTICAL AND CREATE A HIGHLY SIMILAR COMMERCIAL IMPRESSION

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); TMEP §1207.01(b).

Here, the proposed mark, SECUREX , appears with minimal stylization, and the cited registered marks, SECUREX, appear in standard character form and as a typed drawing. The marks are essentially identical because they share the same literal element, SECUREX. The only difference between the marks is that applicant’s mark appears in stylized font while registrant’s marks have protection in standard characters and as a typed drawing. However, registration of a mark in typed or standard character form means that the mark may be displayed in any lettering style. 37 C.F.R. §2.52(a). The rights associated with a mark in typed or standard character form reside in the wording itself, and registrant is free to adopt any style of lettering, including lettering identical to that used by applicant. Therefore, applicant’s presentation of its mark in special form will not avoid likelihood of confusion with a mark that is registered in typed or standard character form because the marks could be used in the same manner of display. See In re Melville Corp., 18 USPQ2d 1386, 1387-88 (TTAB 1991); TMEP §1207.01(c)(iii).

Furthermore, when a mark consists of a word portion and a stylized or design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods. Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); TMEP §1207.01(c)(ii).

Accordingly, consumers viewing the marks SECUREX in standard characters and as a typed drawing and SECUREX in stylized format are likely to believe that the goods emanate from the same, common source.

2. SIMILARITY OF THE GOODS: APPLICANT’S IDENTIFIED GOODS ARE CLOSELY RELATED TO, AND CAN BE EXPECTED TO EMANATE FROM THE SAME SOURCE AS, REGISTRANT’S GOODS

Likelihood of confusion is determined on the basis of the goods identified in the application and registration. If the application or registration describes the goods broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the application encompasses all goods of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive …There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold”); TMEP §1207.01(a)(iii).

Applicant’s goods are “security fencing systems, namely, metal gates and fencing panels” in International Class 006. Registrant’s goods are (US Registration No. 2658850), “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;” and (US Registration No. 3370388), “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.”

i. APPLICANT’S AND REGISTRANT’S GOODS ARE RELATED AND MOVE WITHIN THE SAME CHANNELS OF TRADE.

The goods of the parties need not be identical or directly competitive to find a likelihood of confusion. Instead, 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. On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); TMEP §1207.01(a)(i).

Based on the aforementioned standard, the applicant’s goods are closely related to the registrant’s goods because it is likely that they would be sold and/or marketed together in the same channels of trade. Specifically, registrant uses the mark in part, for “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.” Applicant proposes to use its mark for “security fencing systems, namely, metal gates and fencing panels.” Both applicant’s and registrant’s marks are in the field of security devices and apparatus. Indeed, registrant’s “automatic door operators” and “electrified and electromechanical exit devices for providing ingress and egress to facilities” could include applicant’s metal fences and panels. Furthermore, registrant’s locks, keypad controllers, automatic door operators; key pads; key pad-operated locks; solenoid-operated locks; and electrified and electromechanical exit devices for providing ingress and egress to facilities may be used to lock and secure applicant’s gates and fencing panels. Therefore, the goods are used together for the same purpose and function, namely, to lock and secure particular items or locations for security purposes.

Applicant indicates that “[t]he only product sold … under the SECUREX (stylized) mark is a range of heavy duty structural expanded metal mesh panels;” and that it “does not sell the hinges, locks and associated hardware to facilitate their expanded metal mesh structural panels as gates.”^{^[1]} Nonetheless, registrant’s electronic locks, exit devices and other security devices, are closely related to the applicant’s goods for security fencing systems because such security gates and fences are often marketed and sold with alarms, locks and various forms of security features to ensure safety. As such, registrant’s locks are a key feature of applicant’s gates or fencing panels, and sold in the same channels of trade.

To further emphasize that applicant’s and registrant’s goods are often marketed and sold in the same channels of trade, the following third party websites clearly establish that the goods are related (emphasis added):

 WWW.MAGAL-SSL.COM (referring to security smart fence comprising physical barrier fence with intrusion detection system)^{^[2]}

 WWW.SAFEGUARDS.COM (referring to mesh fences and barriers, as well as various alarm and detection systems)^{^[3]}

 WWW.NEXTAG.COM (referring to “electric gates” and “electric gate locks”)^{^[4]}

 WWW.HOOVERFENCE.COM (referring to various fences, gates and locks)^{^[5]}

 WWW.AMAZINGGATES.COM (referring to various gates and locks)^{^[6]}

ii. PURCHASERS WOULD BELIEVE THAT APPLICANT’S GOOD ARE WITHIN REGISTRANT’S ZONE OF EXPANSION

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 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. In re Melville Corp., 18 USPQ2d 1386, 1389 (TTAB 1991); see TMEP §1207.01(a)(iii).

Applicant argues that its purchasing requirements and the nature of its market versus the Registrant’s market overcomes the relatedness of the goods. Specifically, “[s]ince customers must call the factory to obtain the product … it is impossible for them to mistake Niles Expanded Metals Inc. for the Yale Lock Co., or any other company in the security industry.”^{^[7]} The applicant further argues that its “product is not in the consumer retail stream of commerce, and is not handled by normal consumer outlets.”^{^[8]}

However, applicant’s goods comprise “security fencing systems, namely, metal gates and fencing panels” without any specified limitation regarding its channel of trade. Furthermore, registrant’s goods comprise various forms of locks and security devices, which are likely to accompany security fencing systems. Likelihood of confusion is determined on the basis of the goods as they are identified in the application and registration. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); TMEP §1207.01(a)(iii). Therefore, the goods are related based on the presumption that applicant’s and registrant’s goods will operate in all normal channels of trade and reach all classes of purchasers, as set forth in their respective, unrestricted identification of goods and without any limitation.

When the application describes the goods broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the application encompasses all goods of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive . . . . There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold.”); TMEP §1207.01(a)(iii). Here again, based on the applicant’s identification of goods, there is no limitation as to the types of gates and panels that it provides. Also, in viewing applicant’s and registrant’s identification of goods, there is no restriction as to the channels of trade in which the goods are sold.

Furthermore, the evidence clearly shows that applicant’s gates and fences are related and often sold together with registrant’s locks and exiting devices. As such, 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. Id.

Attached in Office Action dated September 3, 2008, 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, applicant’s metal gates and fencing panels, as well as registrant’s 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); TMEP §1207.01(d)(iii).^{^[9]}

iii. SOPHISTICATION OF CONSUMER DOES NOT OBVIATE LIKELIHOOD OF CONFUSION

Applicant argues that likelihood of confusion does not exist because its products are sold to “sophisticated professional contractors in the fields of construction and security.”^{^[10]} Applicant also states that “even those entities with a minimum of expertise in this field are still sufficiently knowledgeable to know the sources of the various products…”^{^[11]}

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). Indeed, as evidenced by the aforementioned common manufacturers, it is common to see fences and various locks, exit devices, etc. sold together and/or by common manufacturers. Furthermore, although applicant may solely operate within the “contractor market,” there is no indication that registrant does not operate within the same market.

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).

Lastly, although applicant argues that there is no evidence of actual confusion in this case,^{^[12]} the test under Trademark Act Section 2(d) is whether there is a likelihood of confusion. It is unnecessary to show actual confusion in establishing likelihood of confusion. TMEP §1207.01(d)(ii); e.g., Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990). The Trademark Trial and Appeal Board stated as follows:

[A]pplicant’s assertion that it is unaware of any actual confusion occurring as a result of the contemporaneous use of the marks of applicant and registrant is of little probative value in an ex parte proceeding such as this where we have no evidence pertaining to the nature and extent of the use by applicant and registrant (and thus cannot ascertain whether there has been ample opportunity for confusion to arise, if it were going to); and the registrant has no chance to be heard from (at least in the absence of a consent agreement, which applicant has not submitted in this case).

In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).

It is also worth noting that 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); TMEP §1207.01(a). Therefore, because the marks are nearly identical in appearance, and the goods are closely related, there is a strong likelihood of confusion.

V. CONCLUSION

Applicant’s mark SECUREX (stylized) is likely to be confused with registrant’s marks SECUREX (typed drawing and standard character) because they share the same literal element and use the mark on closely related goods. Specifically, the applicant’s mark is nearly identical to the cited registered marks. Furthermore, the evidence shows that registrant’s electronic locks, exit devices and other security alarm devices are closely related to the applicant’s security fencing systems. For the foregoing reasons, it is respectfully submitted that the refusal of registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), be affirmed.

Respectfully submitted,

Trademark Attorney

Law Office 116

Voice: 571-272-8256

Fax: 571-273-8256

Robert L. Lorenzo

Acting Managing Attorney

Law Office 116

[1] See Appellant’s Brief, pg. 2.

[2] Attached as evidence on pages 2-3 of the Office Action dated December 26, 2006.

[3] Attached as evidence on pages 4-7 of the Office Action dated December 26, 2006.

[4] Attached as evidence on pages 9-12 of the Office Action dated February 7, 2008.

[5] Attached as evidence on pages 7-9 of the Office Action dated September 3, 2008.

[6] Attached as evidence on pages 2-7 of the Office Action dated May 15, 2009.

[7] See Appellant’s Brief, pg. 4.

[8] See Appellant’s Brief, pgs. 4-5.

[9] Attached as evidence on pages 13-44 of the Office Action dated September 3, 2008.

[10] See Appellant’s Brief, pgs. 2-3.

[11] See Appellant’s Brief, pg. 5.

[12] See Appellant’s Brief, pg. 7-8.