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  78/889128

 

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

 

Likelihood of Confusion

The trademark attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified goods and services, so resembles the mark in U.S. Registration No. 2640321 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.  See the enclosed registration.

 

The trademark attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the trademark 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 (CCPA 1973).  Second, the trademark 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).

 

Applying the above analysis to this application, the trademark attorney must first conclude that the marks are similar.  Applicant’s mark is WATERSENSE.  The dominant wording in the registered mark is WATERSENSE.  This shared wording, WATERSENSE, creates a strong similarity. 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. 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). 

 

As to the second part of the test, applicant provides printed matter in the field of water efficient goods and services as well as educational, promotional and informational services on the benefits of choosing water efficient goods and services.  Registrant provides water treatment services as well as chemicals and equipment for water treatment.  The subject of applicant’s goods and services may include the water treatment goods and services of the registrant.  Thus, the goods and services are highly related.

 

Therefore, because the marks are similar and the goods and services are related, there is a likelihood of confusion and registration must be refused.

 

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

Recitation of Services

The recitation of services is unacceptable as indefinite.  The applicant may amend the description as follows.  TMEP section 1402.01 and 1402.03.

 

“Providing educational, promotional and informational services to the public on the benefits of choosing water efficient goods and services” is unacceptable and likely includes services in more than one class.  For “educational” services the mode of instruction is required.  Applicant may state “class 41—educational services, namely, providing classes and seminars in the field of the benefits of choosing water efficient goods and services.”  “Promotional” services may be stated “Class 35—promoting public awareness of the benefits of choosing water efficient goods and services.”  Finally, “information” services are classified according to the nature of the information.  If applicant’s information is about the commercial products of others, applicant may state “Providing information about the goods and services of others in the field of the benefits of choosing water efficient goods and services.”  

 

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.

 

For the applicant's convenience, the Trademark Acceptable Identification of Goods and Services Manual on the internet at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/ offers a searchable list of acceptable identifications and classifications.  When formulating and classifying identifications the Manual is a useful resource and guide, but it is not an exhaustive list of every acceptable identification. 

 

Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.

 

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

 

 

 

 

/Daniel Capshaw/

Trademark Attorney

Law Office 110

571.272.9356

 

 

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.