UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
OFFICE ACTION
STRICT DEADLINE TO RESPOND TO THIS LETTER
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6
MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE:
The referenced application has been reviewed by the
assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37
C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
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 No. 3390735. 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.
Applicant seeks to register the mark EST for “System for cutting meat
fibers.”
Registrant has registered the mark EST and design for, inter alia, “Machines and
machine tools for the cutting and forming of materials; electric knives.”
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).
The marks are highly similar.
The literal elements are identical; both marks comprise the identical combination of letters, EST. The addition of the design element does not obviate the similarity of the marks in this case. See In re Shell Oil
Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii). 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 whether marks are confusingly similar. In re Dakin’s
Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); TMEP §1207.01(c)(ii); see CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir
1983); In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011).
Comparison of the Goods and/or Services
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).
In a likelihood of confusion analysis, the comparison of the parties’ goods and/or services is
based on the goods and/or services as they are identified in the application and registration, without limitations or restrictions that are not reflected therein.
In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); see Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62
USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638-39 (TTAB 2009); TMEP §1207.01(a)(iii).
In this case, applicant’s goods and/or services are identified broadly. Thus, 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 the goods and/or services move in all normal channels of trade, and
that they are available to all potential customers. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261
(Fed. Cir. 2011); In re La Peregrina Ltd., 86 USPQ2d 1645, 1646 (TTAB 2008); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); TMEP
§1207.01(a)(iii).
Applicant’s goods are identified as “System for cutting meat fibers.” Registrant’s goods include cutting machines and electric
knives. It is presumed that applicant’s system for cutting meat fibers comprises the precise goods identified by registrant. Please
see attached web pages from www.marel.com showing machines for cutting, sawing, trimming and slicing meat.
Material obtained from the Internet is generally accepted as competent evidence. See In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-03 (TTAB 2009) (accepting Internet evidence to show relatedness of goods in a likelihood of
confusion determination); In re Rodale Inc., 80 USPQ2d 1696, 1700 (TTAB 2006) (accepting Internet evidence to show genericness); In re White, 80 USPQ2d 1654, 1662 (TTAB 2006) (accepting
Internet evidence to show false suggestion of a connection); In re Joint-Stock Co. “Baik”, 80 USPQ2d 1305, 1308-09 (TTAB 2006) (accepting Internet evidence to show geographic significance);
In re Consol. Specialty Rests. Inc., 71 USPQ2d 1921, 1927-29 (TTAB 2004) (accepting Internet evidence to show geographic location is well-known for particular goods); In re Gregory, 70
USPQ2d 1792, 1793, 1795 (TTAB 2004) (accepting Internet evidence to show surname significance); In re Fitch IBCA Inc., 64 USPQ2d 1058, 1060-61 (TTAB 2002) (accepting Internet evidence to show
descriptiveness); TBMP §1208.03; TMEP §710.01(b).
The examining attorney notes that this refusal will be reconsidered upon applicant’s entry of an amended identification of the goods. Please see
requirement below.
Conclusion
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or
services, 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. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003
(Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by
submitting evidence and arguments in support of registration.
Applicant must respond to the requirement(s) set forth below.
IDENTIFICATION / CLASSIFICATION OF THE GOODS
Applicant identifies and classifies the goods as follows:
Class 7: System for cutting meat fibers
The word “system” in the identification of goods is indefinite and must be amended to list the major
parts or components of the system, as well as describe the nature, purpose and use of the system. Applicant should use common generic terms when specifying the parts
or components of the system. See TMEP §§1401.02(a), 1402.01. The classification of the major component part listed first will
determine the classification of the system as a whole.
Applicant should note that a process or system is a way of doing something, and is not generally a tangible product. Thus,
the name of a process or system does not function as a trademark unless it is also used to indicate the source of the goods in the application. See
In re Griffin Pollution, 517 F.2d at 1358-59, 186 USPQ at 167.
Applicant may adopt one or both of the following amended identifications of the goods, if accurate:
- System for cutting meat fibers comprised primarily of cutting machines and computer hardware (INT. CLASS 7)
- System for cutting meat fibers comprised primarily of computer hardware, software and automated cutting machines (INT. CLASS 9)
If applicant adopts the suggested amendment of the identification of goods and/or services, then applicant must
amend the classification to the International Class indicated. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.
An applicant may amend an identification of goods only to clarify or limit the goods; adding to or
broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.
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.
MULTICLASS APPLICATION REQUIREMENTS
The application identifies goods and/or services that are classified in at least two classes; however, the fees
submitted are sufficient for only one class. In a multiple-class application, a fee for each class is required. 37 C.F.R.
§2.86(a)(2); TMEP §§810.01, 1403.01.
Therefore, applicant must either restrict the application to the number of classes covered by the fees already paid, or submit the fees for the additional
class(es).
For an application with more than one international class, called a “multiple-class application,” an
applicant must meet all the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):
(1) Applicant must list the goods and/or services by international
class.
(2) Applicant must submit an application filing fee for each international class
of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
SIGNIFICANCE OF WORDING
Applicant must explain whether “EST” has any meaning or significance in the industry in
which the goods and/or services are manufactured/provided, or if such wording is a “term of art” within applicant’s industry. See 37
C.F.R. §2.61(b); TMEP §814.
Failure to respond to a request for information is an additional ground for refusing registration. See
In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
CLOSING
If applicant has questions regarding this Office action, please telephone the assigned trademark examining
attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to
this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02,
709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office
action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
/Tracy L. Fletcher/
Examining Attorney
Law Office 115
U.S. Patent and Trademark Office
Telephone: (571) 272-9471
Facsimile: (571) 273-9471
tracy.fletcher@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as
responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant
or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney
must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial
deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR
shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.