Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  77/007030

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

LIKELIHOOD OF CONFUSION

Information regarding pending Application Serial No. 76607505 is enclosed.  The filing date of the referenced application precedes applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.  If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 2411983 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

Applicant seeks registration on the Principal Register for the mark USP STRUCTURAL CONNECTORS in standard character form, for use with goods identified as “Epoxy Adhesives and Synthetic Resins for Repairing and Bonding Building Materials to Concrete, Masonry, Wood and Steel.”  The cited registration is for the mark USP ULTRA SYSTEM PRODUCTS for use with goods identified as “Waterproofing chemical compositions in the form of cementitious and liquid for construction surfaces” and “Interior paint, exterior paint, house paint, wood preservative, rust preservative in the nature of a coating, for the home and commercial building markets, and not for use in the automobile industry.”

 

The following principals were considered in making this determination.

 

SIMILARITY OF THE PARTIES’ GOODS

The parties’ goods and/or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely.  In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq. 

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  Instead, 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.  On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i). 

 

In this case, the parties’ goods are similar and related because both parties’ goods include chemical compositions for use in construction.  Since the identification in the cited registration is broad, it is presumed that the registration encompasses all goods of the type described including applicant’s more particularly identified compositions, e.g., epoxy adhesives and synthetic resins, that they move in all normal channels of trade and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re Optica International, 196 USPQ 775 (TTAB 1977); TMEP §1207.01(a)(iii).

 

SIMILARITY OF THE PARTIES’ MARKS

The parties’ marks are examined for similarities in appearance, sound, connotation and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).  The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 54 USPQ2d 1894, 1890 (Fed. Cir. 2000); Visual Information Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

While the marks are compared in their entireties under a Section 2(d) analysis, one feature of a mark may nevertheless be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); TMEP §1207.01(b)(viii).  The “USP” portion in the registrant’s mark and in applicant’s mark may be recognized as dominant and most significant in creating a commercial impression, because the average purchaser of goods retains only a vague recollection of marks encountered in marketplace, and this recollection may logically be triggered by the first word of a mark, especially if it is word or term not frequently encountered in similar marketing experiences. See Tony Lama Company, Inc. v. Anthony Di Stefano, 206 USPQ 176 (TTAB 1980). 

 

Inasmuch as consumers are inclined to focus on the initial part in any trademark or service mark, the initial part of a mark is considered in many cases to be more significant.  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 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).

 

Registration of a mark in typed or standard character form means that the mark may be displayed in any lettering style.  37 C.F.R. §2.52(a).  The rights associated with a mark in typed or standard character form reside in the wording itself.  If this application issued to registration, it would mean that applicant would be entitled to adopt any style of lettering in the display of its mark, including lettering identical to that used by registrant.  Squirtco v. Tomy Corp., 216 USPQ 937 (Fed. Cir. 1983).  Therefore, presentation of one mark in standard character or typed form will not avoid likelihood of confusion with a mark that is registered in special form because the marks could be used in the same manner of display.  See In re Melville Corp., 18 USPQ2d 1386, 1387-88 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987); In re Hester Indus., Inc., 231 USPQ 881, 882, n.6 (TTAB 1986); United Rum Merchants, Ltd. v. Fregal, Inc., 216 USPQ 217, 220 (TTAB 1982); Frances Denney, Inc. v. Vive Parfums, Ltd., 190 USPQ 302, 303-04 (TTAB 1976); TMEP §1207.01(c)(iii).

 

In this case, the parties’ marks are highly similar overall.  Both marks begin with the identical three-letters USP in the identical sequence and USP is followed in both marks by less significant and descriptive wording.  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 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 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP §1207.01(c)(ii).

 

CONCLUSION

The similarities between the parties’ marks, goods, and markets outweigh the differences and the cumulative differences are not sufficient to preclude likelihood of confusion.  Federated Foods, Inc. v. Fort Howard Paper Co., 192 USPQ 24 (CCPA 1976).  The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).

 

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 to register, then applicant must also respond to the following requirements.

 

REQUIREMENTS – DISCLAIMER

Applicant must disclaim the wording “STRUCTURAL CONNECTORS” apart from the mark as shown because it merely describes one or more features, purposes and/or uses of the identified goods.  Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).  As shown on the applicant’s specimen and the attached website excerpts about two of applicant’s adhesive products, applicant’s epoxy adhesives and synthetic resins for repairing and bonding building materials to concrete, masonry, wood and steel are used in connection with fasters and different types of structural connectors, such as those identified in applicant’s Reg. No. 2929329 for the mark USP STRUCTURAL CONNECTORS, for “metal connectors, plates and brackets for structural framing; metal sawhorse brackets; metal framing and junction plates used in the construction of geodesic and other buildings.”  The attached copy of Reg. No. 2929329 supports this requirement because applicant was required to disclaim STRUCTURAL CONNECTORS.

 

A properly worded disclaimer should read as follows:

 

No claim is made to the exclusive right to use STRUCTURAL CONNECTORS apart from the mark as shown.

 

The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof.  15 U.S.C. §1056(a).  Under Section 2(e) of the Trademark Act, the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of one or more features, attributes, purposes and/or uses of the goods.  15 U.S.C. §1052(e).  Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic) in relation one or more features, attributes, purposes and/or uses of the goods.  TMEP §1213.03(a). 

 

Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark.  TMEP §1213.01(b).

 

A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark.  A disclaimer does not affect the appearance of the applied-for mark.

 

ADDITIONAL INFORMATION

The following legal authorities govern the processing of trademark and service mark applications by the Office:  The Trademark Act, 15 U.S.C. §§1051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Office’s Trademark Manual of Examining Procedure (TMEP) (4th ed., 2005), available on the United States Patent and Trademark Office web site at http://www.gov.uspto.report/main/trademarks.htm.

 

It is the applicant’s responsibility to a current and accurate address for correspondence for this application. If the address for correspondence changes, the Office must be promptly notified in a written communication that is both signed and dated.  TMEP section 603.06.  In order to change the correspondence address for an application, an applicant or the attorney of record must submit a written request.  TMEP §603.02(a).  Applicants may file requests to change the correspondence address electronically at http://eteas.gov.uspto.report/V2.0/ca200/WIZARD.htm.  The transmittal of a response to an Office action bearing a new address for an applicant or an applicant’s attorney is not sufficient to effect a change in the correspondence address. 

 

/Mary Rossman/, Trademark Attorney

Law Office 109

Phone: 571 272 9213

Fax (for official responses ONLY): 571 273 9109

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.