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  77/111090

 

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

 

Refusal:  Likelihood of Confusion Refusal Under Section 2(d)

 

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because applicant’s mark, when used on or in connection with the identified goods and services, so resembles the mark in U.S. Registration No. 2629635 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).  TMEP §§1207.01 et seq. 

 

Applicant seeks to register the mark THE VMC GROUP (standard character format) for “a full line of industrial spring mount isolators, seismic and elastomeric isolators” and “building code compliance and seismic design, engineering and consulting services for others, conducting seminars and lectures of building code compliance and seismic design requirement to the engineering and architectural communities”; the already-registered mark is VMC (typed) for “vibration and noise control products for use in heating, ventilating, air conditioning and other machinery; namely spring elastometer isolators, expansion joints, piping and ducting.”

 

Marks may be confusingly similar in appearance notwithstanding the addition, deletion, or substitution of letters or words.  Weiss Assoc. Inc. v. HRL Assoc., 14 USPQ2d 1840 (Fed. Cir. 1990) (TMM held confusingly similar to TMS); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992) (ORAL-ANGLE held likely to be confused with ORAL-B); Jockey Int'l, Inc. v. Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992) (ELAAN stylized held likely to be confused with ELANCE); Crocker National Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986) (COMMCASH likely to be confused with COMMUNICASH); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON  likely to be confused with MILLTRONICS (stylized)).  TMEP section 1207.01(b)(iii).

 

When applicant’s mark is compared to a registered mark, “the points of similarity are of greater importance than the points of difference.”  Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 40, 108 USPQ 161 (D.C. Cir. 1956) (internal citation omitted).  Moreover, regarding the issue of likelihood of confusion, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods they identify come from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972).  For that reason, 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).

 

Further, the examining attorney must look at the marks in their entireties under Section 2(d). Nevertheless, one feature of a mark may 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., 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).  TMEP section 1207.01(b)(viii).

 

Finally, 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, and registrant or applicant is free to adopt any style of lettering, including lettering identical to that used by the other.  Therefore, where one mark at issue is in special form and the other in standard character form or typed, a likelihood of confusion will not be avoided because the standard character or typed mark could be used in the same manner of display as the stylized mark.  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).

 

Here, dominant portion of applicant’s mark is identical to the entirety of registrant’s mark.  Furthermore, the fact that applicant’s mark is in standard character format, while registrant’s mark is in typed form means that both may use their marks in any fashion they choose – including one identical to that of the other.  Accordingly, the marks are confusingly similar in appearance, sound, connotation and overall commercial impression.

 

The goods and services of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods and services come from a common source.  In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).

 

Moreover, likelihood of confusion is determined on the basis of the goods and/or services identified in the application and registration.  If the application describes the goods and/or services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the application encompasses all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive …There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold”); TMEP §1207.01(a)(iii).

 

Finally, it is well recognized that confusion is likely to occur from the use of the same or similar marks for goods, on the one hand, and for services involving those goods, on the other.  See, e.g., In re Hyper Shoppes (Ohio) Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGG'S (stylized) for retail grocery and general merchandise store services held likely to be confused with BIGGS and design for furniture); In re Golden Griddle Pancake House Ltd., 17 USPQ2d 1074 (TTAB 1990) (GOLDEN GRIDDLE PANCAKE HOUSE (with "PANCAKE HOUSE" disclaimed) for restaurant services held likely to be confused with GOLDEN GRIDDLE for table syrup); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988) (MUCKY DUCK and duck design for mustard held likely to be confused with THE MUCKY DUCK and duck design (with "DUCK" disclaimed) for restaurant services);  In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE (stylized) for retail women's clothing store services and clothing held likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); In re United Service Distributors, Inc., 229 USPQ 237 (TTAB 1986) (design for distributorship services in the field of health and beauty aids held likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB for various items of men's, boys', girls' and women's clothing held likely to be confused with THE "21" CLUB (stylized) for restaurant services and towels).

 

First, applicant’s goods are sufficiently broad so that they easily and clearly encompass the more narrowly defined goods of registrant.  With regard to applicant’s services, such services are likely to feature the goods of registrant.  Thus, in both instances, it must be presumed that such goods and services will travel through the same channels of trade and be encountered by the same class of purchasers who will mistakenly believe they come from the same source.

 

Accordingly, applicant’s mark is refused registration under §2(d).

 

Although the examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

Refusal With Regard to Goods and Services in Class 42 and 45[1]:  Specimen Fails to Show Actual Trademark or Service Mark Use

 

The specimen is not acceptable because it does not show the applied-for mark used in connection with any of the goods and/or services specified in the application.  An application must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services based on Section 1(a) in the application.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051 and 1127; 37 C.F.R. §§2.34(a)(1)(iv) and 2.56; TMEP §§904 and 1301.04. 

 

More specifically, with regard to the goods, applicant seeks registration for “a full line” of products.  However, applicant has failed to show use of the mark on a full line of goods.  In order to support its claim that it uses the mark on a full line of goods, the specimens of use must show this.  See In re Astra Merck Inc., 50 USPQ2d 1216 (TTAB 1999); TMEP §1402.03(c).  Applicant has submitted a label and as such, there is simply no evidence of use of the mark on a full line of goods.

 

With regard to the class 42 and 45 services, namely, “building code compliance and seismic design, engineering and consulting services for others,” there is nothing on the specimen which demonstrates that applicant provides such services.   

 

Therefore, applicant must submit the following for classes 9 and 42:

 

(1)   A substitute specimen showing use of the mark for each class of goods and/or services specified in the application; and

 

(2)   The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “The specimen was in use in commerce at least as early as the filing date of the application.”  37 C.F.R. §2.59(a); TMEP §904.09.  If submitting a specimen requires an amendment to the dates of use, applicant must also verify the amended dates.  37 C.F.R. §2.71(c).

 

Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the goods or packaging, or displays associated with the goods at their point of sale.  TMEP §§904.04 et seq.  Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the sale or advertising of the services.  TMEP §§1301.04 et seq.

 

If applicant cannot satisfy the above requirements, applicant may amend the Section 1(a) filing basis (use in commerce) to Section 1(b) (intent to use basis), for which no specimen is required.  However, should applicant amend the basis to Section 1(b), registration cannot be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen.  15 U.S.C. §1051(c); 37 C.F.R. §§2.76, 2.88; TMEP Chapter 1100. 

 

In order to amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.”  15 U.S.C. §1051(b); 37 C.F.R. §§2.34(a)(2) and 2.35(b)(1); TMEP §806.03(c).

 

Pending a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark or service mark for the identified goods or services.  15 U.S.C. §§1051 and 1127; 37 C.F.R. §§2.34(a)(1)(iv) and 2.56.

 

Requirement:  Identification and Classification of Goods and Services

 

The identification of goods and services is unacceptable as indefinite.  Additionally, applicant has failed to correctly classify the goods and services.  Accordingly, applicant must amend the wording of the identification and the classification as indicated.  37 C.F.R. sections 2.32(a)(7) and 2.85; TMEP sections 1402.01, 1401.02(a) and 1401.03(b).

 

Class 7

 

A full line of industrial spring mount isolators, seismic and elastomeric isolators – The wording “isolators” is indefinite.  Applicant must amend the wording to more clearly and more specifically identify the goods on which the mark is used as well as properly classify the goods.  If such goods are simply “shock absorbers for machines,” then such goods are in class 7.  Depending on the use and material out of which they are made, the “spring mount isolators” could be in either class 6 or class 20.  Additionally, applicant should note that if it chooses to use the language “a full line of,” applicant must identify the wording with sufficient specificity so that it is clear that all the goods within that line of goods fall into one class.  TMEP §1402.03(c).   

 

Class 42

 

Building code compliance and seismic design, engineering and consulting services for others – With regard to “building code compliance” and any consulting services connected thereto, applicant must amend the wording to clarify the nature of the services and classify these services in class 45.  With regard dot the remaining wording, applicant must again amend the wording to clarify the nature of the services; such services will remain in class 42. 

 

Conducting seminars and lectures of building code compliance and seismic design requirement to the engineering and architectural communities – This wording must be amended to clarify the nature of the services and to classify such services in class 41.

 

For example, the wording and classification may be amended in its entirety as follows:

 

CLASS 7:

A full line of seismic and elastomeric isolators, namely, shock absorbers for machines.

 

CLASS 41:

Conducting seminars and lectures in the areas of building code compliance and seismic design requirement to the engineering and architectural communities.

 

CLASS 42:

Design and engineering of seismic equipment and consulting in connection therewith.

 

CLASS 45:

Reviewing standards and practices to assure building code compliance and consulting in connection therewith.

 

In the identification, applicant must use the common commercial or generic names for the goods and services, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant chooses to use indefinite terms such as "accessories," "components," "devices," "equipment," "materials," "parts," "systems" and "products," then such terms must be followed by the word "namely" and a list of the specific goods identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).  Furthermore, with regard to services, if the applicant chooses to use indefinite words and phrases such as "services in connection with," "such as," "including," "and like services," "systems," "products," "concepts," or "not limited to," then such terms must be followed by the word "namely" and a list of the specific services identified by their common commercial or generic names.  TMEP §§1402.01 and 1402.03(a).

 

Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. Section 2.71(a); TMEP section 1402.06.  Therefore, applicant may not amend to include any goods or services that are not within the scope of goods set forth in the present identification.

 

Applicant must adopt the appropriate international classification number for the goods and services identified in the application.  The United States uses the International Classification of Goods and Services for the Purposes of the Registration of Marks, established by the World Intellectual Property Organization to classify goods and services.  37 C.F.R. §6.1; TMEP §§1401 et seq.

 

For assistance regarding an acceptable listing of goods and/or services, please see the on‑line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.

 

Requirement:  Requirements for a Multiple-Class Application

 

If applicant prosecutes this application as a combined, or multiple‑class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):

 

(1)   Applicant must list the goods/services by international class with the classes listed in ascending numerical order;

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid; and

 

(3)   For each additional class of goods and/or services, applicant must submit:

 

(a)    dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class; the dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application;

 

(b)   one specimen showing use of the mark for each class of goods and/or services; the specimen must have been in use in commerce at least as early as the filing date of the application;

 

(c)    a statement that “the specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application;” and

 

(d)   verification of the statements in 3(a) and 3(c) in an affidavit or a signed declaration under 37 C.F.R. §2.20.  (NOTE:  Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, or (2) the original specimens are acceptable for the added class.)

 

37 C.F.R. §§2.6, 2.34(a), 2.59, 2.71(c), and 2.86(a); TMEP §§810.10, 904.09, 1403.01 and 1403.02(c).

 

Please note that the specimen(s) of record are acceptable for class 41 only.

 

Requirement:  Disclaimer of Descriptive Wording

 

The applicant must disclaim the descriptive wording "GROUP" apart from the mark as shown. Trademark Act Section 6, 15 U.S.C. Section 1056; TMEP sections 1213 and 1213.03(a).  The wording is merely descriptive because it is simply an entity designation and has no trademark significance.

 

The computerized printing format for the Trademark Official Gazette requires a standard form for a disclaimer.   TMEP section 1213.08(a)(i).  A properly worded disclaimer should read as follows:

 

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

 

See In re Owatonna Tool Co., 231 USPQ 493 (Comm'r Pats. 1983).

 

 

 

 

Response Guidelines

 

Please note, there is no required format or form for responding to this Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  However, if applicant responds on paper via regular mail, the response should include the following information:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.

 

When responding to this Office action, applicant must make sure to respond to each refusal and requirement raised.  If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register.  If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.  Applicant must also sign and date its response.

 

 

If applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

 

 

 

 

 

 

/Susan Kastriner Lawrence/

Trademark Examining Attorney

Law Office 116

(571) 272-9186

 

 

 

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS:  In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant.  Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow.  The Office action will not be attached to the e-mail notice.  Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address.  TDR is available 24 hours a day, seven days a week, including holidays and weekends.  This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

 

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.