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. 

 

Serial Number  79/011905

 

INTERNATIONAL REGISTRATION NO. 0852696.

 

This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application.  15 U.S.C. §1141h(c).

 

APPLICANT OR ATTORNEY CAN RESPOND TO PROVISIONAL REFUSAL:

 

Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf. 

 

NOTE:  Attorneys hired to represent an applicant in a trademark matter before the Office must be eligible under 37 C.F.R. §10.14:

 

(1)     Attorneys residing in the United States who are in good standing with the bar of any United States court or the highest court of any state, may practice before the Office in trademark matters.

(2)     A foreign attorney not residing in the United States who is in good standing before the patent or trademark office of the country in which he or she resides, may practice before the Office in trademark matters only in cases where the patent and trademark office of that foreign country allows substantially reciprocal privileges to those permitted to practice before the Office.  Currently, Canadian attorneys are the only foreign attorneys recognized as meeting this criterion.  A foreign attorney who meets the requirements of 37 C.F.R. §10.14(c) can only represent parties located in the country in which the foreign attorney resides and practices.  TMEP §602.

 

The Office cannot aid in the selection of an attorney.  37 C.F.R. §2.11.

 

If applicant is not represented by an attorney, applicant may appoint a domestic representative who would receive correspondence from the Office and be served process or notice of proceedings affecting the application.  15 U.S.C. §1141h(d); 37 C.F.R. §2.24.

 

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

 

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

 

Likelihood of Confusion

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. 2582606 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining 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 (C.C.P.A. 1973).  Second, the examining 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).  TMEP §§1207.01 et seq. 

 

In determining whether there is a likelihood of confusion, the examining attorney must consider all circumstances surrounding the sale of the goods/services.  Industrial Nucleonic Corp. v. Hinde Engineering Co., 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/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.  If the goods/services of the parties differ, it is necessary to show that they are related in some manner.  In re Mack, 197 USPQ 755 (TTAB 1977).  TMEP §§1207.01 et seq. 

 

The applicant has applied to register SQM and design for Chemicals used in industry and science, as well as in fish-breeding, agriculture, horticulture and forestry; fertilizers and fertilizing preparations.  The registered mark is SQM QUIMICOS (with QUIMICOS disclaimed) for iodine.

 

The marks of the parties are confusingly similar.  The dominant portion of each mark is the arbitrary letters SQM.  The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

The goods are closely related, as applicant makes a large variety of chemicals and registrant makes iodine.  The applicant’s website shows that one of its “three main businesses” is iodine.  The goods/services of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods/services come from a common source.  In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).  TMEP §1207.01(a)(i). 

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.

 

Ownership of Cited Registration(s)

If the mark(s) in the cited registration(s) have been assigned to applicant, then applicant must prove ownership of those marks.  TMEP §812.01.

 

Recording Assignments of §66(a) Registrations:

Applicant must record the assignment of registrations based on §66(a) of the Trademark Act with the International Bureau of the World Intellectual Property Organization.  The International Bureau will notify the United States Patent and Trademark Office of the recordation of the change of ownership in the International Register.  The Assignment Services Division of the Office will record only those assignments (or other documents of title) that have been recorded with the International Bureau.  Section 10 of the Trademark Act and 37 C.F.R. Part 3 do not apply to assignments of an international registration or an extension of protection of an international registration to the United States.  37 C.F.R. §7.22; Guide to Implementation of Madrid Protocol in the United States, Exam Guide 02-03, section IV.F.

 

Applicant should state whether the cited registrations have been assigned to applicant and recorded with the International Bureau.

 

Recording Assignments of Other (non-§66(a)) Registrations:

Applicant may record the assignment with the Assignment Services Division of the Office.  Trademark Act Section 10, 15 U.S.C. §1060; 37 C.F.R. §3.25; TMEP §§503 et seq.  Applicant should then notify the trademark examining attorney when the assignment has been recorded.

 

In the alternative, applicant may submit evidence of the assignment of the marks to the applicant, such as: (1) documents evidencing the chain of title; or (2) an explanation of the chain of title (specifying each party in the chain, the nature of each conveyance, and the relevant dates), supported by a notarized affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §3.73; TMEP §502.01.

 

Identification of Goods/Services Unacceptable

The identification of goods/services is unacceptable as indefinite.  Applicant must clarify the identification of goods/services to give the function of the chemicals for agriculture, horticulture and forestry.  See attachment.  TMEP §1402.01.

 

PLEASE NOTE, the international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau of the World Intellectual Property Organization in the corresponding international registration.  TMEP §§1401.03(d), 1401.04 and 1904.02(b).

 

Applicant may adopt the following identification of goods/services, if accurate: 

 

Chemicals used in industry and science, as well as in fish-breeding; CHEMICALS USED IN agriculture, horticulture and forestry FOR [GIVE USE, E.G. FOR THE TREATMENT OF SEEDS]; fertilizers and fertilizing preparations (Class 1).

 

Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  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.

 

Description of the Mark

The applicant must submit a concise description of the mark.  37 C.F.R. §2.37; TMEP §§808 et seq.  The statement may be in the following form:

 

The design element in the mark consists of [describe, e.g. a celestial orbit in a square].

 

Drawing Contains Gray - Clarification Needed

Applicant must clarify whether the gray tones in the drawing are intended to indicate the color gray.  TMEP §807.07(e).

 

(1)   If the color gray is a feature of the mark, then applicant must submit a color claim and description for all the colors in the mark, including black and/or white, as follows:  “The color(s) [specify gray, black and/or white] are features of the mark.  The color(s) [name of color(s)] appear in <specify where the color(s) appear>.”  37 C.F.R. §§2.52(b) and (b)(1); TMEP §§807.07(a)(i) and (a)(ii).

 

(2)               If the color gray is intended to indicate shading or contrast only, then applicant must submit a statement that “the mark is not in color.”

 

Significance of Wording

The applicant must indicate whether SQM has any significance in the relevant trade, any geographical significance, any meaning in a foreign language or any meaning in relation to applicant’s goods.  37 C.F.R. Section 2.61(b).

 

 

 

/James T. Griffin/

Examining Attorney, Law Office 103

(571) 272-9169

Informal communications only:

jim.griffin@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.