Offc Action Outgoing

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:

 

 

The present application was suspended on October 3, 2008, pending disposition of then-pending Application Serial No. 79036945.  Since then, the cited application has matured into a registration.  After review, the examining attorney has determined the following:

 

SECTION 2(D) - LIKELIHOOD OF CONFUSION REFUSAL

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 2360043 and 3557663.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

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 and/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.  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.

 

In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services.  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.

 

Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  The marks are compared for similarities in their appearance, sound, connotation and commercial impression.  TMEP §§1207.01, 1207.01(b).  The goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels.  See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).

 

Applicant seeks to register “TCS” for use on “washers of rubber for use in machines, automobiles, ships, cylinders and toys; non-metal seals for use in machines, automobiles, ships, cylinders and toys; rings of rubber for use as pipe connection seals; seals for water pipe connection; seals for plumbing pipe connection; non-metal gaskets for use in machines, automobiles, ships, cylinders and toys; pipe gaskets; water tight rings for plumbing pipes; cylinder jointings; non-metal pipe collars.”

 

The registered marks are:

 

• “TCS2” (Registration No. 2360043) for “heat-shrinkable polyolefin sleeve used for insulating and sealing electrical cables.”

 

• “TCS TEMEL CONTA SANAYI VE TICARET A.S.” (Registration No. 3557663) and design for “non-metal gaskets, asbestos and asbestos paper gaskets, rubber gaskets, gasket material, namely, asbestos and rubberized cork sheets of gasket material, non-metal oil seals, and joint packings for plastic pipes and gaskets, all for use in heavy industry in connection with cylinder heads, crankshaft rear covers, fuel pumps, oil filters, sumps, oil pumps, sump drain plugs, timing covers, water pumps, valve stem seals, thermostat housings, water outlets, oil filler caps, valve covers, manifolds, carburetors, exhaust pipes, camshaft oil seals, and distributor rings, and not for use in vehicles,” with “CONTA SANAYI VE TICARET A.S.” disclaimed.

 

Applicant’s mark closely resembles the registrant’s mark (Registration No. 2360043) because it is completely incorporated by the registrant’s mark.  The only difference between the marks, namely the addition of the numeral “2” in the registrant’s mark, would be perceived as descriptive (as showing a feature and/or characteristic, e.g., model, serial) of the identified goods and/or services and thus an added element to the salient portion of the mark “TCS.”

 

Applicant’s mark closely resembles the registrant’s mark (because it is completely incorporated by the registrant’s mark.  The wording “TCS” appears on the top portion of the design element of the registrant’s mark and would be perceived as an important source-identifying element for the registrant’s goods.

 

The mere deletion of wording from a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d).  See In re Optical Int’l, 196 USPQ 775 (TTAB 1977) (where applicant filed to register the mark OPTIQUE for optical wear, deletion of the term BOUTIQUE is insufficient to distinguish the mark, per se, from the registered mark OPTIQUE BOUTIQUE when used in connection with competing optical wear).  In the present case, applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark (Registration No. 2360043), and there is no other wording to distinguish it from registrant’s mark. 

 

When a mark consists of a word portion and a 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 and/or services.  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); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729, 735 (TTAB 1976); TMEP §1207.01(c)(ii).  Therefore, the addition of the design elements in the registrant’s mark (Registration No. 3557663) would not overcome a likelihood of confusion between the marks.

 

Furthermore, applicant’s and the registrants’ goods are closely related, because they are or include non-metal products for sealing purposes.

 

The goods and/or services 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 and/or services 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).

 

The same consumers will be exposed to the goods identified with applicant’s and the registrants’ marks.  The similarities between applicant’s and the registrants’ 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 applicant who has a legal duty to select a mark that is totally dissimilar to trademarks already being used.  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).

 

Applicant’s mark closely resembles the registrants’ marks and the goods identified by these marks are closely related.  When used on its identified goods, applicant’s mark may cause confusion or mistake to the ordinary consumers as to the source of such goods in relation to the registrants’ marks and their goods.  Based on the above discussion, the examining attorney has determined to refuse registration of applicant’s mark.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

Applicant must respond to the requirement maintained and continued from the previous Office action: identification of goods (the term “cylinder jointings” is still vague and thus indefinite; also the term “water tight” should be corrected as “watertight”).

 

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

 

 

 

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.