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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  78/584784

 

A search of the Office records was deferred pending receipt of a more specific identification of goods and disclaimer.  A refusal under Section 2(e)(1) also was issued.  Applicant provided a disclaimer, which has been made of record.  Applicant also amended the identification of goods.  The identification requires further clarification.  Additionally, the refusal under Section 2(e)(1) is continued and a new refusal under Section 2(d) is issued below.

Likelihood of Confusion

 

Registration of the proposed mark is refused because of a likelihood of confusion with the mark(s) in U.S. Registration No(s). 2922732 and 2924999.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration(s).

 

Taking into account the relevant DuPont factors, a likelihood of confusion determination in this case involves a two-part analysis.  First, the marks are compared 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 goods 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.

 

Regarding the issue of likelihood of confusion, all circumstances surrounding the sale of the goods and/or services are considered.  Industrial Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386 (C.C.P.A. 1973).  These circumstances include the marketing channels, the identity of the prospective purchasers, and the degree of similarity between the marks and between the goods and/or services.  In comparing the marks, similarity in any one of the elements of sound, appearance or meaning is sufficient to find a likelihood of confusion.  In comparing the goods and/or services, it is necessary to show that they are related in some manner.  In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755, 757 (TTAB 1977); TMEP §§1207.01 et seq.

Comparison of the Marks

 

The registered marks are “INDUSTRIAL SAFETY COMPANY” and “INDUSTRIAL SAFETY COMPANY” and design. 

 

Applicant’s mark is “THE SAFETY COMPANY.”

 

Applicant’s mark and the mark(s) of the registrant(s) are highly similar.  Specifically, applicant has essentially just deleted the term “INDUSTRIAL” from the registered marks.  The mere deletion of wording from a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d).  See In re Optical Int’l, 196 USPQ 775 (TTAB 1977) (where applicant filed to register the mark OPTIQUE for optical wear, deletion of the term BOUTIQUE is insufficient to distinguish the mark, per se, from the registered mark OPTIQUE BOUTIQUE when used in connection with competing optical wear).  In the present case, applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s marks, and there is no other wording to distinguish it from registrant’s marks.

 

With respect to Registration No. 2922732, please note that 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 controlling 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).

 

Accordingly, since the marks are so similar in sound, appearance and overall commercial impression, confusion as to source is likely.

Comparison of the Goods/Services

 

In this case, applicant’s goods/services are personal protective products, namely, supplied-air and air-purifying respirators including gas masks and cartridges therefor; eye and face protection apparatus, namely, safety glasses, safety goggles and safety face shields; hearing protection apparatus, namely, ear plugs for non-medical purposes, and safety ear coverings, namely, earmuffs; protective clothing, namely, ballistic vests; head protection apparatus, namely, safety hats and caps; fall protection equipment, namely, safety harnesses, lanyards and lifelines; thermal imaging cameras; instruments for detecting monitoring, measuring, analyzing and recording hazardous and toxic substances in the atmosphere. 

 

The services in Registration No. 2922732 are wholesale distributorship, mail order catalog, and telephone and online ordering services for products in the field of industrial equipment, namely, eye and ear protective gear; protective clothing, footwear and gloves; ergonomic body supports; wall protectors; protective screens; hazardous chemical containers; portable containment pools; drum platforms, liners, racks, platforms and covers; ladders; dollies; funnels; fill gauges; faucets; pumps; first aid supplies; respirators; cans; cabinets; floor mats; tags; tape; and signs. 

 

The services in Registration No. 2924999 are wholesale distributorship, mail order catalog, and telephone and online ordering services for products in the field of industrial equipment, namely, eye and ear protective gear; protective clothing, footwear and gloves; ergonomic body supports; wall protectors; protective screens; hazardous chemical containers; portable containment pools; drum platforms, liners, racks, platforms and covers; ladders; dollies; funnels; fill gauges; faucets; pumps; first aid supplies; respirators; cans; cabinets; floor mats; tags; tape; and signs.

 

Applicant’s goods are of the same type and some even appear identical to those items distributed and retailed by registrant.  Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGG’S for retail grocery and general merchandise store services held confusingly similar to BIGGS for furniture); In re U.S. 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); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (STEELCARE INC. for refinishing of furniture, office furniture, and machinery held likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (use of similar marks for trucking services and on motor trucks and busses is likely to cause confusion).

 

Accordingly, registration must be refused because the average purchaser would be likely to conclude that applicant’s goods/services and those in the cited registration(s) emanate from a common source.

 

Mark Is Merely Descriptive – Section 2(e)(1)

The examining attorney also refuses registration on the Principal Register because the proposed mark merely describes the goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); TMEP §§1209 et seq. 

A mark is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services.  In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987);  In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright‑Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b).  A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1).  Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966). 

In this case, applicant applied to register the mark “THE SAFETY COMPANY” for personal protective products, namely, supplied-air and air-purifying respirators including gas masks and cartridges therefor; eye and face protection apparatus, namely, safety glasses, safety goggles and safety face shields; hearing protection apparatus, namely, ear plugs for non-medical purposes, and safety ear coverings, namely, earmuffs; protective clothing, namely, ballistic vests; head protection apparatus, namely, safety hats and caps; fall protection equipment, namely, safety harnesses, lanyards and lifelines; thermal imaging cameras; instruments for detecting monitoring, measuring, analyzing and recording hazardous and toxic substances in the atmosphere. 

The proposed mark merely corresponds to wording, which is not arbitrary, but bears a logical relationship to the goods provided by the applicant.  The term “SAFETY” refers to being safe and free from risk, danger, or injury (see definition attached to prior Office action).  In this case, applicant’s goods are “protective products,” which appear to keep people free from some type of risk, danger or injury.  With respect to the term “COMPANY,” this simply tells consumers that applicant is a business entity and does not help to distinguish the source of applicant’s goods (see definition attached to prior Office action).

Applicant’s Argument:

Applicant argued that “safety company” was suggestive at best as it did not refer directly to the goods  provided by applicant.

Response:

The term “SAFETY COMPANY” describes a type of company that is in the business of providing safety equipment such as those items identified in the application.  In this regard, the examining attorney refers to the excerpted articles from the examining attorney's search of the Internet using the GOOGLE® search engine in which “safety company” appeared in over 180,000 stories.  See attachments.  The submitted stories are a representative sample of the stories retrieved by the indicated search.  Sample search summary page(s) and representative stories from the search have both been provided.  Search result summary pages have probative value since search engine results as well as Web site contents are equally accessible to the consuming public and both constitute evidence that the public may be exposed to the term.  See In re Fitch ICBA Inc., 64 USPQ2d 1058 (TTAB 2002). Printouts of articles downloaded from the Internet are admissible as evidence of information available to the general public, and of the way in which a term is being used by the public.  TMEP §710.01(b).   In re Total Quality Group Inc., 51 USPQ2d 1474, 1475-76 (TTAB 1999); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370-1 (TTAB 1998).  With regard to evidence the Trademark Trial and Appeal Board has also stated that newswire stories have probative value because of the increasing use of the personal computer to obtain news and information, see In re Cell Therapeutics Inc., 67 USPQ2d 1795 (TTAB 2003); and that foreign publications and English language websites have probative value since the Internet is a tool widely available to all.  See In re Remacle, 66 USPQ2d 1222 (TTAB 2002) at note 5.   Thus, it is clear that the mark describes a feature of the goods.

Based upon the foregoing, it is clear that the mark immediately names the purpose of the goods and does nothing else.  Accordingly, the mark is refused registration on the Principal Register under Section 2(e)(1).

 

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(s) to register, then applicant must also respond to the following requirement(s).

Identification and Classification of Goods

 

The wording “respirators” in the identification of goods needs clarification because it is a bit overly broad.  TMEP §1402.01.  Applicant must clarify that the respirators are not for artificial respiration, if accurate.

 

Additionally, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  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.  In this case, the wording “thermal imaging cameras; instruments for detecting monitoring, measuring, analyzing and recording hazardous and toxic substances in the atmosphere” does not fall within the ambit of the original identification, namely, “personal protective products.”  In this regard, the original identification referred to personal items.  While the cameras and instruments are used for the purposes of keeping one safe, they are not directly related to the person.  Even if they were within the scope, then the common commercial name of the instrument for detecting and monitoring the hazardous and toxic substances would be required.

 

Applicant may adopt the following identification, if accurate:

 

Personal protective products, namely, supplied-air and air-purifying respirators other than for artificial respiration, including gas masks and cartridges therefor; eye and face protection apparatus, namely, safety glasses, safety goggles and safety face shields; hearing protection apparatus, namely, ear plugs for non-medical purposes, and safety ear coverings, namely, earmuffs; protective clothing, namely, ballistic vests; head protection apparatus, namely, safety hats and caps; fall protection equipment, namely, safety harnesses, lanyards and lifelines; in Class 9.

 

For assistance with identifying 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.

 

Additionally, please note that fees are based upon the number of classes covered in an application.  If applicant adopts a description of goods/services covering additional classes, then an additional fee will be required.  In this regard, applicant should note the following multiple-classification requirements.

Multiple-classification Requirements

 

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 with the classes listed in ascending numerical order.  TMEP § 1403.01; 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).  37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

Disclaimer Advisory

 

The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer.  TMEP §1213.08(a)(i).  Please note that applicant’s disclaimer will be printed as follows using the standard format used by the Office:

 

No claim is made to the exclusive right to use “COMPANY” apart from the mark as shown.

 

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

 

If applicant has any questions, please do not hesitate to contact the undersigned.

 

/Maureen Dall/

 

Maureen L. Dall

Trademark Attorney, Law Office 110

United States Patent and Trademark Office

Phone: 571-272-9714

 

 

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.

 

 

Note:

 

In order to avoid size limitation constraints on large e-mail messages, this Office Action has been split into 2 smaller e-mail messages.  The Office Action in its entirety consists of this message as well as the following attachments that you will receive in separate messages:

 

Email 1 includes the following 11 attachments  

1. 78272504P001OF002  

2. 78272504P002OF002  

3. 78273957P001OF003  

4. 78273957P002OF003  

5. 78273957P003OF003  

6. safetyco-1  

7. safetyco-2  

8. a  

9. a2-1  

10. a2-2  

11. b-1  

 

Email 2 includes the following 7 attachments  

1. b-2  

2. c  

3. d-1  

4. d-2  

5. d-3  

6. d-4  

7. g  

 

Please ensure that you receive all of the aforementioned attachments, and if you do not, please contact the assigned-examining attorney.