UNITED STATES PATENT AND TRADEMARK OFFICE
|
SERIAL NO: 79/032411
APPLICANT: Fisia Babcock Environment GmbH
|
|
|
CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
|
|
MARK: DIVA
|
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
|
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 79/032411
INTERNATIONAL REGISTRATION NO. 0907219.
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).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:
Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf. However, the only attorneys who can practice before the USPTO in trademark matters are as follows:
(1) Attorneys in good standing with a bar of the highest court of any U.S. state, and
(2) Canadian attorneys who have applied for and received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c). Canadian attorneys can only represent Canadian applicants.
37 C.F.R. §10.14; TMEP §602.
Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys. Preparing a paper, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter. A response signed by an unauthorized foreign attorney is considered an incomplete response. TMEP §§602, 602.03, 603.05.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
Registration Refused - Likelihood of Confusion with a Registered Mark
Applicant is applying for registration of the mark DIVA for use in connection with “apparatus and plants composed thereof for the thermal treatment of waste and garbage, in particular for use in garbage incineration plants and in sewage sludge incineration plants, industrial plants, power stations; parts of the above mentioned apparatus, included in this class; furnaces for industrial purposes, industrial furnaces, firing grids, cylindrical rotary kilns; filter apparatus for purifying industrial gases, parts of the above-mentioned filters, included in this class; apparatus for cooling and drying gases and solid particles; flue gas purification reactors, DeNOx plants; apparatus and furnaces for the thermal treatment of carbon for producing carbon gas; gas washers, namely apparatus and filter apparatus for purifying gases; combustion reactors; steam generating apparatus” in International Class 011, “assembling, repairing, maintenance and installation of the aforementioned goods and plants, also with regard to their operation and for performing trial runs” in International Class 037, and “engineering services; technical consultancy services, in particular for process optimization and industrial analyses; development of electronic data processing programs; technical inspection of the aforementioned apparatus and plants, also with regard to their operation and for performing trial runs” in International Class 042. Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 1543397. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registration.
A likelihood of confusion determination requires a two-part analysis. First the marks are compared for similarities in appearance, sound, and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. 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 (TTAB 1977); TMEP §1207.01(b). Second, the goods and 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 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. Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).
As outlined above, the first step in determining a likelihood of confusion is to compare the marks for similarities between them. Here, applicant’s mark DIVA is identical to registrant’s mark DIVA in sound, appearance, and commercial impression.
The next part of the analysis is to compare the goods and services 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 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, some of the goods are very similar, and the remaining goods and services are closely related. Applicant’s goods and services are “apparatus and plants composed thereof for the thermal treatment of waste and garbage, in particular for use in garbage incineration plants and in sewage sludge incineration plants, industrial plants, power stations; parts of the above mentioned apparatus, included in this class; furnaces for industrial purposes, industrial furnaces, firing grids, cylindrical rotary kilns; filter apparatus for purifying industrial gases, parts of the above-mentioned filters, included in this class; apparatus for cooling and drying gases and solid particles; flue gas purification reactors, DeNOx plants; apparatus and furnaces for the thermal treatment of carbon for producing carbon gas; gas washers, namely apparatus and filter apparatus for purifying gases; combustion reactors; steam generating apparatus” in International Class 011, “assembling, repairing, maintenance and installation of the aforementioned goods and plants, also with regard to their operation and for performing trial runs” in International Class 037, and “engineering services; technical consultancy services, in particular for process optimization and industrial analyses; development of electronic data processing programs; technical inspection of the aforementioned apparatus and plants, also with regard to their operation and for performing trial runs” in International Class 042. Registrant’s goods are manual valves for sanitary and heating apparatus. Registrant’s goods, as set forth in its identification of goods, constitute parts of sanitary and heating apparatus. Accordingly, these goods are highly similar to applicant’s parts of its goods in Class 011 to the extent that the goods listed are sanitary and heating apparatus. Further, because registrant’s goods constitute parts of goods like those identified by applicant, the applicant’s goods and services are complementary to registrant’s goods in that parts like those identified by registrant may be used in conjunction with applicant’s goods and in order to perform applicant’s services. Accordingly, not only are some of the goods highly similar, but applicant’s remaining goods and services are closely related to registrant’s goods.
When confronted with very similar and otherwise closely related goods and services bearing identical marks, a consumer is likely to have the mistaken belief that the goods and originate from the same source. Because this likelihood of confusion exists, registration of the proposed mark must be refused.
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 to register, then applicant must also respond to the following requirements.
Amended Identification of Goods and Services Required
Class 011
The wording “apparatus and plants composed thereof for the thermal treatment of waste and garbage, in particular for use in garbage incineration plants and in sewage sludge incineration plants” in the identification of goods must be clarified because it is unacceptably indefinite. TMEP §1402.01. Applicant must specify the particular apparatus intended and the common commercial name of the goods described as “plants composed thereof.” Applicant may substitute the following wording, if accurate: “apparatus in the nature of [specify] and [specify common commercial wording for plants composed thereof] for the thermal treatment of waste and garbage, in particular for use in garbage incineration plants and in sewage sludge incineration plants.”
The wording “industrial plants” in the identification of goods must be clarified because it is unacceptably indefinite. TMEP §1402.01. Applicant must specify the common commercial name of the particular type of industrial plants intended. Applicant may substitute the following wording, if accurate: “industrial plants, namely, [specify].”
The wording “power stations” in the identification of goods must be clarified because it is unacceptably indefinite. TMEP §1402.01. Applicant must specify the common commercial name for the goods intended (e.g., power plants, etc.). Applicant may substitute the following wording, if accurate: “power plants.”
The wording “parts of the above mentioned apparatus, included in this class” in the identification of goods must be clarified because it is unacceptably indefinite. TMEP §1402.01. Applicant must list the particular parts intended or must specify that its parts are replacement parts. Also, applicant must remove the wording “included in this class” because it is unnecessary. Applicant may substitute the following wording, if accurate: “replacement parts for the aforementioned apparatus.”
The wording “furnaces for industrial purposes” in the identification of goods must be clarified because it is unacceptably indefinite. TMEP §1402.01. Applicant must specify the particular type of furnaces intended (e.g., heating furnaces, hot blast furnaces, carbonizing furnaces, etc.). Applicant may substitute the following wording, if accurate: “furnaces for industrial purposes, namely, [specify].”
The wording “firing grids” in the identification of goods must be clarified because it is unacceptably indefinite. TMEP §1402.01. Applicant must specify the common commercial name for these goods. Applicant may substitute the following wording, if accurate: “firing grids in the nature of [specify common commercial name].”
The wording “filter apparatus for purifying industrial gases” in the identification of goods must be clarified because it is unacceptably indefinite. TMEP §1402.01. Applicant must specify the particular filter apparatus intended (e.g., filters, separators, filtering units, etc.). Applicant may substitute the following wording, if accurate: “filters for purifying industrial gases.”
The wording “parts of the above-mentioned filters, included in this class” in the identification of goods must be clarified because it is unacceptably indefinite. TMEP §1402.01. Applicant must list the particular parts intended or must specify that its parts are replacement parts. Also, applicant must remove the wording “included in this class” because it is unnecessary. Applicant may substitute the following wording, if accurate: “replacement parts therefore.”
The wording “apparatus for cooling and drying gases and solid particles” in the identification of goods must be clarified because it is unacceptably indefinite. TMEP §1402.01. Applicant must specify the common commercial name for the intended apparatus (e.g., cooling evaporators, industrial dryers for heating and dehumidifying, etc.). Applicant may substitute the following wording, if accurate: “apparatus in the nature of cooling evaporators and industrial dryers for cooling and drying gases and solid particles.”
The wording “DeNOx plants” in the identification of goods must be clarified because it is unacceptably indefinite. TMEP §1402.01. Applicant must specify the common commercial name for these goods (e.g., selective catalytic reduction apparatus for removal of nitrogen oxide gas emitted from combustors and incinerators, etc.). Applicant may substitute the following wording, if accurate: “DeNOx plants being selective catalytic reduction apparatus for removal of nitrogen oxide gas emitted from combustors and incinerators.”
The wording “apparatus and furnaces for the thermal treatment of carbon for producing carbon gas” in the identification of goods must be clarified because it is unacceptably indefinite. TMEP §1402.01. Applicant must specify the common commercial name for the particular apparatus intended. Applicant may substitute the following wording, if accurate: “apparatus in the nature of [specify] and furnaces for the thermal treatment of carbon for producing carbon gas.”
The wording “gas washers, namely apparatus and filter apparatus for purifying gases” in the identification of goods must be clarified because it is unacceptably indefinite. TMEP §1402.01. Applicant must specify the common commercial name for the particular apparatus and filter apparatus intended (e.g., gas purifiers, gas filters, etc.). Also, applicant must replace the wording “gas washer” with the correct common commercial name for these goods (e.g., gas purifying apparatus, etc.). Applicant may substitute the following wording, if accurate: “gas purifying apparatus, namely, gas purifiers and gas filters for purifying gases.”
The wording “combustion reactors” in the identification of goods must be clarified because it is unacceptably indefinite. TMEP §1402.01. Applicant must specify the particular use for these goods. Applicant may substitute the following wording, if accurate: “combustion reactors for use in [specify].”
The wording “steam generating apparatus” in the identification of goods must be clarified because it is unacceptably indefinite. TMEP §1402.01. Applicant must specify the common commercial name for the particular apparatus intended (e.g., steam generators, etc.). Applicant may substitute the following wording, if accurate: “steam generators.”
Class 037
The wording “assembling, repairing, maintenance and installation of the aforementioned goods and plants” in the identification of services must be clarified because it is unacceptably indefinite. TMEP §1402.01. Applicant must list the goods to which its assembling, repairing, maintenance and installation apply. The wording “of the aforementioned goods and plants” is not sufficiently definite. Applicant may substitute the following wording, if accurate: “assembling, repairing, maintenance and installation of apparatus in the nature of [specify] and [specify common commercial wording for plants composed thereof] for the thermal treatment of waste and garbage, in particular for use in garbage incineration plants and in sewage sludge incineration plants; industrial plants, namely, [specify]; power plants; replacement parts of the above mentioned apparatus; furnaces for industrial purposes, namely, [specify]; industrial furnaces, firing grids in the nature of [specify common commercial name]; cylindrical rotary kilns; filters for purifying industrial gases and replacement parts therefore; apparatus in the nature of cooling evaporators and industrial dryers for cooling and drying gases and solid particles; flue gas purification reactors, DeNOx plants being selective catalytic reduction apparatus for removal of nitrogen oxide gas emitted from combustors and incinerators; apparatus in the nature of [specify] and furnaces for the thermal treatment of carbon for producing carbon gas; gas purifying apparatus, namely, gas purifiers and gas filters for purifying gases; combustion reactors for use in [specify]; steam generators.”
The wording “also with regard to their operation and for performing trial runs” in the identification of services must be clarified because it is unacceptably indefinite. TMEP §1402.01. Applicant must specify the particular services intended because this wording is unclear. It appears that applicant omitted a portion of the intended wording.
Class 042
The wording “technical consultancy services, in particular for process optimization and industrial analyses” in the identification of services must be clarified because it is unacceptably indefinite. TMEP §1402.01. Applicant must clarify the type of “process optimization” and “industrial analysis” intended in order to clarify the proper classification of these services. Applicant may substitute the following wording, if accurate: “technical consultancy services in connection with [specify particular type of process optimization intended] and industrial analyses in the nature of [specify particular type of industrial analyses intended].”
The wording “technical inspection of the aforementioned apparatus and plants, also with regard to their operation and for performing trial runs” in the identification of services must be clarified because it is unacceptably indefinite. TMEP §1402.01. Applicant must specify the particular inspection services intended that are classified in International Class 042 and must list the related apparatus and plants. The wording “of the aforementioned apparatus and plants” is not sufficiently definite. Applicant may substitute the following wording, if accurate: “technology inspection services pertaining to apparatus in the nature of [specify] and [specify common commercial wording for plants composed thereof] for the thermal treatment of waste and garbage, in particular for use in garbage incineration plants and in sewage sludge incineration plants; industrial plants, namely, [specify]; power plants; replacement parts of the above mentioned apparatus; furnaces for industrial purposes, namely, [specify]; industrial furnaces, firing grids in the nature of [specify common commercial name]; cylindrical rotary kilns; filters for purifying industrial gases and replacement parts therefore; apparatus in the nature of cooling evaporators and industrial dryers for cooling and drying gases and solid particles; flue gas purification reactors, DeNOx plants being selective catalytic reduction apparatus for removal of nitrogen oxide gas emitted from combustors and incinerators; apparatus in the nature of [specify] and furnaces for the thermal treatment of carbon for producing carbon gas; gas purifying apparatus, namely, gas purifiers and gas filters for purifying gases; combustion reactors for use in [specify]; steam generators; technology inspection services pertaining to the aforementioned goods with respect to their operation and for performing tests in the nature of trial runs.”
To summarize, applicant may adopt the following identification of goods and services, if accurate:
Class 011 Apparatus in the nature of [specify] and [specify common commercial wording for plants composed thereof] for the thermal treatment of waste and garbage, in particular for use in garbage incineration plants and in sewage sludge incineration plants; industrial plants, namely, [specify]; power plants; replacement parts of the above mentioned apparatus; furnaces for industrial purposes, namely, [specify]; industrial furnaces, firing grids in the nature of [specify common commercial name]; cylindrical rotary kilns; filters for purifying industrial gases and replacement parts therefore; apparatus in the nature of cooling evaporators and industrial dryers for cooling and drying gases and solid particles; flue gas purification reactors, DeNOx plants being selective catalytic reduction apparatus for removal of nitrogen oxide gas emitted from combustors and incinerators; apparatus in the nature of [specify] and furnaces for the thermal treatment of carbon for producing carbon gas; gas purifying apparatus, namely, gas purifiers and gas filters for purifying gases; combustion reactors for use in [specify]; steam generators
Class 037 Assembling, repairing, maintenance and installation of apparatus in the nature of [specify] and [specify common commercial wording for plants composed thereof] for the thermal treatment of waste and garbage, in particular for use in garbage incineration plants and in sewage sludge incineration plants; industrial plants, namely, [specify]; power plants; replacement parts of the above mentioned apparatus; furnaces for industrial purposes, namely, [specify]; industrial furnaces, firing grids in the nature of [specify common commercial name]; cylindrical rotary kilns; filters for purifying industrial gases and replacement parts therefore; apparatus in the nature of cooling evaporators and industrial dryers for cooling and drying gases and solid particles; flue gas purification reactors, DeNOx plants being selective catalytic reduction apparatus for removal of nitrogen oxide gas emitted from combustors and incinerators; apparatus in the nature of [specify] and furnaces for the thermal treatment of carbon for producing carbon gas; gas purifying apparatus, namely, gas purifiers and gas filters for purifying gases; combustion reactors for use in [specify]; steam generators; [specify clearly the services intended by the wording “also with regard to their operation and for performing trial runs”]
Class 042 Engineering services; technical consultancy services in connection with [specify particular type of process optimization intended] and industrial analyses in the nature of [specify particular type of industrial analyses intended]; development of electronic data processing programs; technology inspection services pertaining to apparatus in the nature of [specify] and [specify common commercial wording for plants composed thereof] for the thermal treatment of waste and garbage, in particular for use in garbage incineration plants and in sewage sludge incineration plants; industrial plants, namely, [specify]; power plants; replacement parts of the above mentioned apparatus; furnaces for industrial purposes, namely, [specify]; industrial furnaces, firing grids in the nature of [specify common commercial name]; cylindrical rotary kilns; filters for purifying industrial gases and replacement parts therefore; apparatus in the nature of cooling evaporators and industrial dryers for cooling and drying gases and solid particles; flue gas purification reactors, DeNOx plants being selective catalytic reduction apparatus for removal of nitrogen oxide gas emitted from combustors and incinerators; apparatus in the nature of [specify] and furnaces for the thermal treatment of carbon for producing carbon gas; gas purifying apparatus, namely, gas purifiers and gas filters for purifying gases; combustion reactors for use in [specify]; steam generators; technology inspection services pertaining to the aforementioned goods with respect to their operation and for performing tests in the nature of trial runs
If the suggestions offered by the examining attorney are incomplete or are inaccurate, applicant is encouraged to consult the online searchable Manual of Acceptable Identifications of Goods and Services for guidance at http://tess2.gov.uspto.report/netahtml/tidm.html.
Please note that the international classification of goods and services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods and services in the corresponding international registration. TMEP §§1401.03(d) and 1904.02(b).
Therefore, any modification to the wording in the identification of goods and services must identify goods and services in the classification specified in the application.
Please also 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.
/Debra Lee/
Examining Attorney
Law Office 116
Voice: 571-272-5897
Fax: 571-273-9116
HOW TO RESPOND TO THIS OFFICE ACTION:
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.