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  78/658051

 

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

 

Section 2(d) - Likelihood of Confusion Refusal

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. 2232562 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

Taking into account the relevant DuPont factors, a likelihood of confusion determination in this case focuses on 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.

 

Here, the marks  are identical and will clearly create the same commercial impression in the minds of consumers.  Applicant’s goods are used with “PVC compounds (all types) including chemical products used in industry, research, scientific experiments, photography, agriculture, cultivation of orchards and afforestation; fertilizers (natural and artificial); fire extinguishing substances; metal tempering substances; chemical preparations for welding; chemical materials for foodstuffs; glycerin for animal feed and animal foodstuffs; tannery materials; adhesive materials used in industry” and registrant’s goods are used with “enzyme preparations for manufacturing use in the foods industry; transglutaminase preparations for manufacturing use in the foods industry”. 

 

Likelihood of confusion is determined on the basis of the goods as they are identified in the application and the registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).  Since the identification of the applicant’s goods is very broad, it is presumed that the application encompasses all goods of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers.  TMEP §1207.01(a)(iii).

 

 

When confronted with the parties' respective goods, purchasers will mistakenly believe that the goods originate from the same source. 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 examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence in support of  registration.

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following.  Resolution of the requirement discussed below is essential but is not, alone, sufficient to overcome the foregoing refusal.

 

Identification of Goods

The identification of goods is unacceptable as indefinite because much of the wording is unduly broad.  The Trademark Act requires that the identification of goods be specific, clear, accurate, definite and as concise as possible.   Please also note that parentheticals are not acceptable in the identification. The applicant must list the goods without parentheses.

 

 

The applicant may adopt the following identification, if accurate: 

 

“PVC compounds, namely, [specify; e.g.,  chemical preparations used in industry, research, scientific experiments, photography, agriculture and cultivation of orchards in the nature of (specify chemical preparations)]; fertilizers; fire extinguishing compositions; metal tempering preparations and metal tempering chemicals; chemical preparations for welding, namely, [specify]; chemical materials for foodstuffs namely, [specify]; and adhesive materials for the building industry” in Class 1.

 

 

“glycerin for use in animal feed and animal foodstuffs” in Class 31.

 

 

“tannery materials, namely, [specify nature and use]” in Class TBD.

 

The trademark examining attorney examines identifications of goods and/or services for acceptability in accordance with the Rules of Practice in Trademark Cases and USPTO policies and procedures in effect at the time registration is sought.  Descriptions of goods and/or services found in earlier-filed applications and registrations are not always determinative on the issue of acceptability of such identifications in the present time.  For guidance on writing identifications of goods and/or services, please use the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html, which is frequently updated in accordance with prevailing rules and policies.  See TMEP §§702.03(a)(iv) and 1402.04.

 

 

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. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.

 

Please note, if applicant elects to add additional classes other than the one for which applicant has already paid a fee, then applicant should refer to Rule 2.86 for combined application requirements.

 Significance of Mark

Applicant must also specify whether “ACTIVA” has any significance in the applicant’s  trade or industry, any geographical significance, or any meaning in a foreign language.  37 C.F.R. §2.61(b).

 

 

 

 

/kbp/

Kimberly Boulware Perry

Attorney - Law Office 112

phone: 571-272-9208; fax: 571-273-9112

direct email: kimberly.perry@uspto.gov

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• 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 in your response.

 

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.