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 assigned trademark examining attorney has reviewed the referenced application and has determined the following:

 

LIKELIHOOD OF CONFUSION – REFUSAL

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 0930455, 3659669 and 3659670.  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 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’s mark, PIONEER, is identical in sound and meaning to the registered marks, all of which consist of the wording PIONEER.  While Registration Nos. 0930455 and 3659669 are stylized, applicant’s mark is presented in standard characters. 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 generally will not 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).

 

Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii).

 

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:

 

“jaw crushers, roll crushers, vibrator screens, revolving screens, portable receiving and loading bins, belt conveyors, belt conveyor rollers, portable crushing plants, portable gravel, ore and coal screening plants, portable gravel, sand and ore washing plants, portable crushing and screening plants, stationary crushing and cleaning plants, asphalt mixing plants, clay and gravel mixing and treating plants, sand and gravel screening and metering units, portable asphalt mixing plants, bucket elevators, reciprocating plate feeders, apron feeders, traveling grizzly feeders, conveyor type bulk material car loaders, cradle type portable conveyors, sand dehyrators, sand and rock driers, dust collectors for sand and rock driers, vibrating feeders, impact crushers, hammermills, asphalt surge silos, and asphalt drag conveyors” – Registration No. 0930455;

 

“Woodworking machines, namely, jointers, shapers, electric sanders, mortisers, drill presses, electric generators, and boring machines; dust collectors, including dust collection fittings, namely, dust fittings in the nature of elbows, t's, y's, splices, reducers, blastgates, and dust hoods air compressors for dust collectors; power collection hose for the collection of dust waste from hand tools; overarm routers, namely, pin router for woodworking; power feeders; vacuum cleaners in the nature of shop vacuums; electric sanders, namely, wide belt sanders, oscillating sanders, drum sanders, spindle sanders, and edge sanders; lathes; molders; air filters for mechanical purposes; air powered tools, namely, drills, screwdrivers, and rivet hammers; buffing wheels for use with power operated machines; wire wheels for power-operated grinders; chucks for power drills; electrically operated brushes, being parts of machines; paint spray guns; power tools, namely, end mills; carpenter's tools, namely, wire brushes for use in machines” - Registration No. 3659669;

 

“Woodworking machines, namely, jointers, shapers, electric sanders, mortisers, drill presses, electric generators, and boring machines; dust collectors, including dust collection fittings, namely, dust fittings in the nature of elbows, t's, y's, splices, reducers, blastgates, and dust hoods air compressors for dust collectors; power collection hose for the collection of dust waste from hand tools; overarm routers, namely, pin router for woodworking; power feeders; vacuum cleaners in the nature of shop vacuums; electric sanders, namely, wide belt sanders, oscillating sanders, drum sanders, spindle sanders, and edge sanders; lathes; molders; air filters for mechanical purposes; air powered tools, namely, drills, screwdrivers, and rivet hammers; buffing wheels for use with power operated machines; wire wheels for power-operated grinders; chucks for power drills; electrically operated brushes, being parts of machines; paint spray guns; power tools, namely, end mills; carpenter's tools, namely, wire brushes for use in machines” – Registration No. 3659670.

 

Applicant’s goods, namely “machinery, including machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles), including oilfield drilling equipment, namely, oilfield drilling rigs” are closely related to registrant’s goods because applicant’s broad identification of “machinery… machines and machine tools” encompasses the machinery identified in the registered marks.  Likelihood of confusion is determined on the basis of the goods and/or services 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); In re Shell Oil Co., 992 F.2d 1204, 1207 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); TMEP §1207.01(a)(iii).

 

In this case, applicant’s goods are identified broadly.  Therefore, it is presumed that the application encompasses all goods 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).

 

If the goods of the respective parties are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

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 machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles), including oilfield drilling equipment, namely, oilfield drilling rigs

 

Unfortunately, the italicized wording above is insufficiently definite for registration purposes.  See TMEP §1402.01. Applicant must identify the particular machinery and machine tools provided, e.g. drilling machines, metalworking machine tools, etc.

 

The identification of goods and/or services contains parentheses.  Generally, parentheses and brackets should not be used in identifications.  Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).”  TMEP §1402.12. 

 

Therefore, applicant must remove the parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description. 

 

Applicant may adopt the following, if accurate

 

“drilling machines, metalworking machine tools; motors and engines except for land vehicles; machine coupling and transmission components except for land vehicles, including oilfield drilling equipment, namely, oilfield drilling rigs” in Class 007.

 

Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

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.