UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/701176
MARK: QUICKSILVER
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: GES Global Energy Services, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
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.
Applicant’s mark, QUICKSILVER, is confusingly similar to the registered marks, QUICKSILVER DRILLING RIG (Registration Nos. 3097651 and 3272846), and QUICKSILVER (Registration Nos. 3707564 and 1005713). In the case of Registration Nos. 3707564 and 1005713, the marks are identical. In the case of Registration Nos. 3097651 and 3272846, applicant has merely deleted wording from the registered marks, namely the wording “drilling rig.” The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.
Consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).
If the marks of the respective parties are identical, the relationship between the goods and/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. 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).
The registered marks identify the following goods:
“oilfield drilling rig” – Registration No. 3097651;
“Oilfield drilling equipment, namely, oilfield drilling rigs and oil well pumping machines” – Registration No. 3272846;
“Exhausts, namely, exhaust components for land vehicles, namely, manifolds, headers, pipes, collectors, silencers, mufflers, tubes, catalytic converters, tail-pipes, tips; exhaust systems for vehicles comprising manifolds, headers, pipes, collectors, silencers, mufflers, tubes, catalytic converters, tail-pipes, tips; silencers as part of exhaust systems; exhaust manifolds for engines; catalytic converters; catalytic converters being parts of vehicle exhausts; all of the foregoing goods manufactured in alloys of stainless steel, titanium, inconel and mild steel; all for land vehicle use and specifically excluding marine use” – Registration No. 3707564;
“accessories for marine engines-namely, special purpose gearing, throttle and steering control mechanisms, exhaust systems, fresh water cooling systems and power takeoffs, engine ignition systems, shielded ignition systems, electric starters, power trim and power steering, power shift, oil filters, fuel filters and water separators” – Registration No. 1005713.
Applicant’s goods, namely “machinery; including, but not limited to oilfield drilling rigs and other oilfield drilling equipment and machinery” are closely related to the goods of the registered marks because applicant’s broad identification of “machinery” includes all types of machinery, including the machinery identified in the registered marks.
In this case, applicant’s goods and/or services are identified broadly. Therefore, it is presumed that the application encompasses all goods and/or services of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade, and that they are available to all potential customers. See TMEP §1207.01(a)(iii); see, e.g., In re Americor Health Servs., 1 USPQ2d 1670, 1670-71 (TTAB 1986); In re Equitable Bancorporation, 229 USPQ 709, 710 (TTAB 1986).
When confronted with identical goods bearing highly similar marks, a consumer is likely to have the mistaken belief that the goods originate from the same source. Because this likelihood of confusion exists, registration must be refused.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following.
IDENTIFICATION UNACCEPTABLE - REQUIREMENT
Applicant has identified the following:
“machinery; including, but not limited to oilfield drilling rigs and other oilfield drilling equipment and machinery” in Class 007.
Unfortunately, the italicized wording above is insufficiently definite for registration purposes. See TMEP §1402.01. Applicant must identify the particular machinery and equipment provided.
Applicant may adopt the following, if accurate
“machinery, namely oilfield drilling machines and oilfield drilling rigs” in Class 007.
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. See TMEP §1402.04.
/Sean Crowley/
Trademark Attorney
Law Office 116
571.272.8851 (phone)
571.273.8851 (fax)
sean.crowley@uspto.gov
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.