UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 76709941
MARK: ITS
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: INDUSTRIAL TEST SYSTEMS, INC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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.
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, 2.65(a); TMEP §§711, 718.03.
LIKELIHOOD OF CONFUSION
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.
The applicant applied to register ITS for computer software for use in water analysis.
The registered mark is ITS for water distillation and water filtering units which provide in tank sanitization utilizing ultraviolet light for the control of bacterial growth in the cooling chamber.
The marks are identical.
The goods of the parties are closely related because they are both used to study or treat water. The registrant’s goods treat water with ultraviolet light to prevent the growth of bacteria in stored water. The registrant’s web site states:
Research has confirmed that UV light is extremely effective against cryptosporidium. Unique to innowave’s range of water dispensers is the patented Automatic Purification Monitoring System (APMS) on select models. The APMS monitors the effectiveness of the UV light and will trigger an alarm should the lamp be defective. The unit will also stop the supply of water until the faulty lamp has been replaced, thus guaranteeing the purity of water at all times. innowave technology has been tested to NSF/ANSI standards. The innowave UVF water treatment system has been awarded with NSF/ANSI 55B, a certification of drinking water purification using ultraviolet light.[1]
See attachment.
Consumers are likely to believe that the applicant’s software is used to operate the registrant’s purification monitoring system, or to otherwise operate, monitor or maintain the registrant’s equipment in testing and monitoring water quality, purity or other characteristics.
The similarities between the marks and the goods of the parties are so great as to create a likelihood of confusion. 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.
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
Failure to respond to this request for information can be grounds for refusing registration. See In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
If applicant has questions regarding this Office action, please telephone or e-mail 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.
/Esther A. Belenker/
Trademark Examining Attorney
Law Office 111
Tel: 571/272-9125
Fax: 571/273-9125
esther.belenker@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.
NOTICE OF IMPLEMENTATION OF THE NEW EDITION OF THE NICE AGREEMENT AND CORRESPONDING CHANGES TO CLASSIFICATION: Effective January 1, 2012, the Tenth Edition of the Nice Agreement changed the classification of certain goods and services. See http://www.wipo.int/classifications/nice/en/about_the_ncl/preface.html. All applications filed on or after January 1, 2012 must comply with the Tenth Edition. See 37 C.F.R. §2.85(e)(1); TMEP §1401.11. Applications filed prior to January 1, 2012 may comply with either the Ninth or Tenth Edition; however, the entire identification must comply with the selected edition. See 37 C.F.R. §2.85(e)(2); TMEP §1401.11. The USPTO’s online U.S. Acceptable Identification of Goods and Services Manual, located at http://tess2.gov.uspto.report/netahtml/tidm.html, provides classification information for the Tenth Edition and also includes classification information for the Ninth Edition in notes to specific entries. See TMEP §1402.04.