To: | Dynamix Agitators Inc. (trademarks@schwabe.com) |
Subject: | TRADEMARK APPLICATION NO. 77610353 - DYNAMIX - tba |
Sent: | 2/11/2009 12:39:21 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/610353
MARK: DYNAMIX
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Dynamix Agitators Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 2/11/2009
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
Section 2(d) Refusal – Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2735509. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
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.
Similarity 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 applicant’s mark is DYNAMIX. The registrant’s mark is DYNA-MIX. The marks are essentially identical as they have the same sound, meaning and commercial impression, and the marks are virtually identical in appearance notwithstanding the hyphen in the registrant’s mark.
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 this case, the applicant’s goods are “mixers, namely, bulk mixers, tote mixers, industrial mixers, drum mixers and portable mixers; process equipment, namely, agitators for circulating liquid media.” The registrant’s goods are “grinding machine and mixing machine.”
The applicant’s and registrant’s goods are virtually identical or closely related. That is, applicant’s mixing machines may be identical to registrant’s mixing machines. Further, applicant’s agitators and registrant’s mixing and grinding machines may be used in the same field or for a related application; and, applicant’s mixers and agitators and registrant’s mixing and grinding machines may be used in the same field or for a related application.
In sum, the marks are essentially identical and the goods are identical or closely related. As such, consumers encountering the marks of the parties on or in connection with the identified goods are likely to be confused as to the source of the goods. Accordingly, registration is refused pursuant to Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
Although applicant’s mark has been refused registration, applicant may respond to the refusal 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.
Identification of Goods is Indefinite
The wording “mixers, namely, bulk mixers, tote mixers, drum mixers and portable mixers” in the identification of goods is indefinite and must be clarified because the nature of the goods is not clear. See TMEP §1402.01. For example, “portable mixers” could include industrial mixers or household or kitchen mixers. Therefore, applicant must specify the use or field of use of the mixers.
Applicant may substitute the following wording, if accurate:
“Concrete mixers, namely, bulk mixers, tote mixers, drum mixers and portable mixers” in International class 7;
“Industrial mixers, namely, bulk mixers, tote mixers, drum mixers and portable mixers” in International class 7;
“Portable kitchen mixers” in International class 7;
See TMEP §§1402.01, 1402.03.
The wording “industrial mixers, process equipment, namely, agitators for circulating liquid media” is acceptable as written in the application.
Identifications of goods can be amended 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. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods 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.
Application Pursuant to Sections 1(a) and 44(d)
The application specifies both a use in commerce basis under Trademark Act Section 1(a) and a claim of priority under Section 44(d) based on a foreign application. See 15 U.S.C. §§1051(a), 1126(d); 37 C.F.R. §2.34(a)(1), (a)(4). However, the application does not include a foreign registration certificate or a statement indicating whether applicant intends to rely upon the resulting foreign registration under Section 44(e) as an additional basis for registration. See 15 U.S.C. §1126(e).
Although Section 44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration. 37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02, 1003.03. It is unclear whether applicant intends to rely on Section 44(e) as an additional basis for registration.
Therefore, applicant must clarify the basis in the application by satisfying one of the following:
(1) If applicant intends to rely on Section 44(e), in addition to Section 1(a), as a basis for registration, applicant must provide a written statement to that effect. In addition, (i) applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law, and (ii) applicant must submit a true copy, photocopy, certification or certified copy of the foreign registration from applicant’s country of origin. See 15 U.S.C. §1126(b)-(c), (e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§806.02(f), 1002.01, 1004. A copy of the foreign registration must be a copy of a document that issued to the applicant by or was certified by the intellectual property office in the applicant’s country of origin. TMEP §1004.01. If the foreign registration is not written in English, then applicant must provide an English translation. 37 C.F.R. §2.34(a)(3)(ii). The translation should be signed by the translator. TMEP §1004.01(b). If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant must respond to this Office action requesting suspension pending receipt of the foreign registration documentation. TMEP §1003.04.; or
(2) If applicant intends to rely solely on a use in commerce basis under Section 1(a), while retaining its Section 44(d) priority filing date, applicant must provide a written statement that it does not intend to rely on Section 44(e) as a basis for registration and request that the mark be approved for publication based solely on the Section 1(a) basis. See TMEP §§806.02(f), 806.04(b), 1003.04.
If applicant has any questions or needs assistance responding to this Office action, please telephone the undersigned examining attorney.
/Christine Cooper/
Trademark Examining Attorney
Law Office 113
U.S. Patent & Trademark Office
(571) 272-9844
(571) 273-9844 fax
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.