Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

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: 9/11/2009

 

The referenced application and preliminary amendment have 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.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2660039; 2882774; 2929519; 2929523, and 2963549.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

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.

 

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.

 

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 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 the instant matter, applicant seeks to register the stylized mark SAMSUNG for, in relevant part, “AIRBAGS FOR VEHICLES. . . ANTITHEFT ALARMS FOR VEHICLES; AUTOMOBILE SEAT CUSHIONS; AUTOMOBILES. . . BRAKES FOR LAND VEHICLES; BURGLAR ALARMS FOR VEHICLES. . . DISC BRAKE PADS FOR VEHICLES. . . MOTORS FOR AUTOMOBILES. . . TORQUE CONVERTERS FOR LAND VEHICLES. . . BELTS FOR LAND VEHICLE TRANSMISSIONS. . .  DIESEL ENGINES FOR LAND VEHICLES; ENGINES FOR LAND VEHICLES; GLASS WINDOWS FOR VEHICLES. . . LAND VEHICLE TRANSMISSIONS AND REPLACEMENT PARTS THEREOF; LAND VEHICLE TRANSMISSION REBUILD KITS, SOLD AS A UNIT. . . OIL PUMPS FOR LAND VEHICLE ENGINES. . . TIRES FOR LAND VEHICLES. . .  TRANSMISSION CASES FOR LAND VEHICLES; VEHICLE PARTS, NAMELY, SUSPENSION STRUTS; VEHICLE PARTS, NAMELY, BALL JOINTS; VEHICLE WINDOWS,” “ADVERTISING AGENCIES; ART GALLERIES; BUSINESS RESEARCH AND SURVEYS; COMMERCIAL INFORMATION AND DIRECTORY AGENCY; CONDUCTING BUSINESS RESEARCH AND SURVEYS; CONDUCTING MARKETING STUDIES; DATA PROCESSING SERVICES; DISPLAYING ADVERTISEMENTS FOR OTHERS; EXPORT AND IMPORT AGENCIES; MARKET RESEARCH; PREPARATION OF CUSTOM ADVERTISEMENTS AND CUSTOM PROMOTIONAL PRODUCTS FOR OTHERS; PREPARING AND PLACING OUTDOOR ADVERTISEMENTS FOR OTHERS; PRODUCT DEMONSTRATION; PROVIDING STATISTICAL INFORMATION FOR BUSINESS AND COMMERCIAL PURPOSES; RESTAURANT FRANCHISING; SAMPLE DISTRIBUTION; TELEVISION ADVERTISING AGENCIES,” and “AUTOMATED SECURITIES BROKERAGE.”  Registrants’ marks are as follows:

 

SAMSUNG stylized (U.S. Registration No. 2882774), SAMSUNG (U.S. Registration No. 2929519), SAMSUNG and design (U.S. Registration No. 2929523) for, in relevant part, “compressors for vehicles; electric ignitions for land vehicles,” “audio cassette decks for automobiles” and “air conditioners for vehicles; heaters for vehicles”;

P3 BY SAMSUNG POWER TO THE RESELLER and design for “Business support services, namely, providing trade information and business consultation services to resellers of computers and integrated computer systems” (U.S. Registration No. 2963549); and

SAMSUNGFN for “FINANCIAL SERVICES, NAMELY, SECURITIES BROKERAGE SERVICES ON GLOBAL COMPUTER NETWORK” (U.S. Registration No. 2660039).

 

With regard to U.S. Registration Nos. 2882774; 2929519 and 2929523, the literal elements of the marks are virtually identical in appearance, meaning or connotation and commercial impression.  Further, the marks are identical in sound.  Similarity in sound alone may be sufficient to support a finding of likelihood of confusion.  RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB 1975); see TMEP §1207.01(b)(iv).  In addition, the applicant and registrant’s goods for vehicles are highly related and commonly found in the same trade channels.

 

U.S. Registration Nos. 2660039 and 2963549, the marks share SAMSUNG the dominant and arbitrary feature of the marks.  Furthermore, it is well established that the mere addition of a term to a registered mark generally does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Trademark Act Section 2(d).  See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (BENGAL and BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (THE LILLY and LILLI ANN); In re El Torito Rests., Inc., 9 USPQ2d 2002 (TTAB 1988) (MACHO and MACHO COMBOS); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (CAREER IMAGE and CREST CAREER IMAGES); In re Riddle, 225 USPQ 630 (TTAB 1985) (ACCUTUNE and RICHARD PETTY’S ACCU TUNE); In re Cosvetic Labs., Inc., 202 USPQ 842 (TTAB 1979) (HEAD START and HEAD START COSVETIC); TMEP §1207.01(b)(iii).  Confusion is no less likely where, as here, applicant has appropriated a dominant portion of the Registrant’s composite mark.  With regard to the similarity of the services in U.S. Registration No. 2963549, applicant’s services are identified broadly enough to include registrant’s services.  With regard to the similarity of the services in U.S. Registration No. 2660039, applicant and registrant are providing identical services, namely, SECURITIES BROKERAGE SERVICES.

 

If the marks in the cited registrations have been assigned to applicant, applicant can provide evidence of ownership of the marks by satisfying one of the following:

 

(1)  Record the assignment with the Office’s Assignment Services Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded;

 

(2)  Submit copies of documents evidencing the chain of title; or

 

(3)  Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §§2.20, 2.33:  “Applicant is the owner of U.S. Registration Nos. 2660039; 2882774; 2929519; 2929523, and 2963549.” 

 

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§3.25, 3.73; TMEP §502.02(a).

 

Merely recording a document with the Assignment Services Branch does not constitute a response to an Office action.  TMEP §503.01.

 

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 should note the following additional potential ground for refusal.

 

Prior Pending Applications

The filing dates of pending Application Serial Nos. 77018065; 77039912; 77039953; 77039965, and 77572602 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Applicant must respond to the requirement(s) set forth below.

 

IDENTIFICATION AND CLASSIFICATION OF GOODS -- THIS REQUIREMENT APPLIES TO CLASSES 1, 2, 4, 5, 10, 17, 20 and 22 ONLY

 

International Class 1

 

The wording “CHEMICALS, NAMELY, ETHYLHEXANOL, ACETIC ACID, BUTADIENE, DIETHYL MALONATE, DISOPROPYL MALONATE, DIKETENE, DIMETHYL MALONATE, DIMETHYLAMINE, DIMETHYL ORMAMIDE, EPICHLOHYDRINE, ETHOXYLATE, ETHYLENE, ETHYLENE AMINES, ETHYLENE GLYCOL, ETHYLENE OXIDE, AND ETHYLENE VINYL ACETATE” and “CHEMICALS, NAMELY, METHYLMETA ACRYLATE, METHYLENE CHLORIDE, NEOPENTYL GLYCOL, POLYVINYL CHLORIDE, POLYCRYSTALINE SILICONE, POLYETHYLENE, POLYMETHYLMELA ACRYLATE, POLYPROPYLENE, POLYTETRAFLUORO ETHYLENE, POLYVINYL BUTYRAL LILN, POTASSIUM SORBATE, AND PROPYLENE” in the identification of goods is indefinite and must be clarified because the precise nature of the goods is unclear.  See TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “CHEMICALS, NAMELY, ETHYLHEXANOL, ACETIC ACID, BUTADIENE, DIETHYL MALONATE, DISOPROPYL MALONATE, DIKETENE, DIMETHYL MALONATE, DIMETHYLAMINE, DIMETHYL ORMAMIDE, EPICHLOHYDRINE, ETHOXYLATE, ETHYLENE, ETHYLENE AMINES, ETHYLENE GLYCOL, ETHYLENE OXIDE, AND ETHYLENE VINYL ACETATE {specify, e.g., for use in industry; for use in the manufacture of {indicate general nature item, e.g., adhesives, paper, leather or indicate for a wide variety of goods, if accurate}}” and “CHEMICALS, NAMELY, METHYLMETA ACRYLATE, METHYLENE CHLORIDE, NEOPENTYL GLYCOL, POLYVINYL CHLORIDE, POLYCRYSTALINE SILICONE, POLYETHYLENE, POLYMETHYLMELA ACRYLATE, POLYPROPYLENE, POLYTETRAFLUORO ETHYLENE, POLYVINYL BUTYRAL LILN, POTASSIUM SORBATE, AND PROPYLENE {specify, e.g., for use in industry; for use in the manufacture of {indicate general nature item, e.g., adhesives, paper, leather or indicate for a wide variety of goods, if accurate}}”.

 

International Class 2

 

The wording “COLORS FOR DOMESTIC USE” in the identification of goods is indefinite and must be clarified because the precise nature of the goods is unclear.  See TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “Food COLORS FOR DOMESTIC USE.”

 

In addition, the goods “GLAZIERS' PUTTY” are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 1.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

International Class 4

 

The goods “TRANSMISSION FLUID” are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 1.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

International Class 5

 

The wording “NUTRITIONAL ADDITIVES FOR LIVESTOCK FEED” in the identification of goods is indefinite and must be clarified because the precise nature of the goods is unclear.  See TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “NUTRITIONAL ADDITIVES FOR LIVESTOCK FEED for medical purposes.”

 

International Class 10

 

The goods “MAGNETIC BRACELETS FOR MEDICAL PURPOSES” are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 5.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

International Class 17

 

The goods “PLASTIC CONDUIT FOR DRAINAGE AND IRRIGATION” are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 19.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

The wording “PLASTIC PIPES FOR CONVEYING NATURAL GAS” in the identification of goods is indefinite and must be clarified because the precise nature of the goods is unclear.  See TMEP §1402.01.  Applicant may substitute the following wording, if accurate:  “FLEXIBLE PLASTIC PIPES FOR CONVEYING NATURAL GAS.”

 

International Class 20

 

The goods “JEWELRY CASES NOT OF PRECIOUS METAL” are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 14.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

International Class 22

 

The wording “CARBON FIBERS FOR TEXTILE USE” appears twice in the identification.  However, using identical language to describe the goods is not permitted. Applicant must delete duplicative wording.

 

Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services 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 and/or services that are not within the scope of the goods and/or services 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.

 

CLASSIFICATION OF GOODS

 

If applicant adopts the suggested amendment of the goods in Class 20, then applicant must amend the classification to include International Class 14.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401.  

 

MULTIPLE – CLASS APPLICATION REQUIREMENTS

 

The application identifies goods and/or services that are classified in at least 24 classes; however, the fees submitted are sufficient for only 23 class(es).  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 (1) restrict the application to the number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services 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; and

 

(2)        Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).

 

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).

 

Signed Declaration

 

The signed declaration set forth in the preliminary amendment is acceptable.  15 U.S.C. §§1051(b)(3), 1126(d), (e); 37 C.F.R. §2.33(b)(2), (c); TMEP §§804.02, 806.01(b)-(d).

 

If applicant has questions about its application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.

 

 

 

 

 

 

 

/Barbara Rutland/

Trademark Examining Attorney

US Patent & Trademark Office

Law Office 101

571-272-9311

 

 

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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77754863) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 9/11/2009 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77754863&doc_type=OOA&mail_date=20090911 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 9/11/2009 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.