UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/056387
MARK: STANDARD
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Tyrolit Schleifmittelwerke Swarovski K G ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
INTERNATIONAL REGISTRATION NO. 0971032.
This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application. See 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, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and
(2) Canadian agents/attorneys whorepresent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c).
37 C.F.R. §§10.1(c), 10.14; TMEP §602.
Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys. TMEP §602.06(b). Filing written communications, 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. See TMEP §§602.03, 712.03.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
SECTION 2(D) – LIKELIHOOD OF CONFUSION REFUSAL
In this case, the following factors are the most relevant: similarity of the marks and similarity of the goods. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
Similarity of the Marks
Here, applicant’s mark, STANDARD (with design), is confusingly similar to the registered marks, STANDARD BRANDS and STANDARD ABRASIVES, respectively. All of the marks begin with the identical term STANDARD. Consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).
Moreover, the additional wording in the registered marks, BRANDS and ABRASIVES is generic and has been disclaimed. Although a disclaimed portion of a mark certainly cannot be ignored, and the marks must be compared in their entireties, one feature of a mark may be more significant in creating a commercial impression. Disclaimed matter is typically less significant or less dominant when comparing marks. See In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). As such, purchasers are less likely to look to the additional wording in the registered marks for source identification and more likely to rely on the arbitrary first term STANDARD, which is identical in the application and registrations.
When purchasers call for the goods of applicant and registrants, they are likely to be confused as to the sources of the goods by the contemporaneous use of marks beginning with the term STANDARD. Thus, the marks are confusingly similar.
Relatedness of the Goods
Here, applicant’s goods, “cleaning, polishing and abrasive preparations; polishing and abrasive pastes; polishing and abrasive paper, strips and films, tools for machine tools, in particular grinding, cutting, drilling, milling, sawing and polishing tools, manufactured using natural or artificial abrasive grit; diamond wire saws; dressing and profiling tools for grinding wheels, hand-operated tools, in particular grinding and polishing tools equipped with natural or artificial abrasive grit,” are closely related to registrants’ goods, “floor cleaner preparation” and “abrasives in the form of rolls, cloths and sheets, abrasives in the form of belts, discs, wheels, brushes, pads and bands for use on power tools; fastening systems for abrasives and abrasive holders comprising of abrasive disc and holder pad; abrasive grinding wheels with discs for use on power machines and attachment to power drives; abrasive discs and abrasive disc holders; laminated abrasive discs for use on power tools; rubber drums used on power tools to drive bands and belts of coated abrasives and non-woven abrasives” respectively.
With respect to Registration No. 2608000, both applicant and registrant identify cleaning preparations. Likelihood of confusion is determined on the basis of the goods as they are identified in the application and registration. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 1207 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); TMEP §1207.01(a)(iii).
In this case, the applicant’s cleaning preparations goods are identified broadly. Therefore, it is presumed that the application encompasses all cleaning preparations goods of the type described, including those in registrant’s more specific identification, that they move in all normal channels of trade, and that they are available to all potential customers. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(a)(iii).
Moreover, purchasers are accustomed to encountering floor cleaning preparations and polishing and abrasive preparations offered under a single trademark. See Attachment 2 – third party Registration Nos. 2532406, 2705430, 2721478, 2726980, 2805990, 3009342, 3032830, 3225993, 3312164 and 3398245. Attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods as those of applicant and registrant in this case. These printouts have probative value to the extent that they serve to suggest that the goods listed therein, are of a kind that may emanate from a single source. In re Infinity Broad. Corp.,60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).
With respect to Registration No. 3173352, both applicant and registrant identify abrasives in various forms. Despite the different formats of applicant’s and registrant’s Class 03 abrasives – applicant offers abrasives in the forms of paper, strips and films and registrant offers abrasives in the forms of rolls, cloths and sheets – the goods fundamentally are the same. Moreover, registrant offers abrasives in the forms identified in the application. See Attachment 3 – registrant’s Web site. Moreover, because of the breadth of applicant’s Classes 07 and 08 identifications, applicant’s tools for machine tools, dressing and profiling tools for grinding wheels and hand-operated tools with abrasive grit, are broad enough to encompass the various abrasive and abrasive tools identified in the registration.
When purchasers encounter the identical and related cleaning and abrasive goods of applicant and registrants, they are likely to be confused as to the sources of the goods by the obvious overlap and clear association between them. Thus, the goods are closely related.
Thus, because the marks are confusingly similar and the goods are closely related, purchasers encountering these goods are likely to mistakenly believe that they are provided by a common source. Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act.
Response to Section 2(d) – Likelihood of Confusion Refusal
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.
INFORMALITIES
If applicant chooses to respond to the refusal to register, then applicant must also respond to the following informalities:
Identification of Goods Indefinite – Amendment Required
Applicant may adopt the following identification of goods, if accurate:
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Class 03 – |
“Cleaning, polishing and abrasive preparations; polishing and abrasive pastes; polishing and abrasive paper, strips and films.” |
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Class 07 – |
“Tools for machine tools, namely, grinding, cutting, drilling, milling, sawing and polishing tools, manufactured using natural or artificial abrasive grit, namely, [applicant to specify tools for machine tools, tool bits for machines, dies for use with machine tools, etc.]; diamond wire saws being power-operated; dressing and profiling tools, namely, grinding tools for grinding wheels.” |
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Class 08 – |
“Hand-operated tools, namely, grinding and polishing tools equipped with natural or artificial abrasive grit, namely, [applicant to specify tools, i.e., manually-operated grinding wheels, manually-operated grindstones, etc.].” |
TMEP §1402.01.
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 in the corresponding international registration. TMEP §§1401.03(d), 1904.02(b).
Additions to Identification Not Permitted
Color Location Statement Required
Applicant has submitted a color drawing and color claim, but has not submitted the required color location statement. Applications for color marks must include both a list of the colors that are claimed as a feature of the mark and a description of where the colors appear in the mark. 37 C.F.R. §2.52(b)(1); see TMEP §§807.07(a) et seq. Generic color names must be used to describe the colors in the mark, e.g., magenta, yellow, turquoise. TMEP §807.07(a)(i)-(a)(ii). Therefore, applicant must provide a description of where the colors appear in the mark. The following color location statement is suggested:
“The mark consists of the term STANDARD to the left of two five-point stars; the color blue appears in the term STANDARD and in the two five-point stars.
TMEP §807.07(a)(ii).
Significance of Mark Required
Failure to respond to this request for information can be grounds for refusing registration. See In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
Disclaimer Required
Applicant must insert a disclaimer of STANDARD in the application because it means “of recognized excellence or established authority,” which describes the quality of applicant’s goods. See Attachment 4 – definition of STANDARD. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). Moreover, this Office consistently treats STANDARD as descriptive for similar goods by requiring a disclaimer or registration on the Principal Register under Section 2(f) or the Supplemental Register. See Attachment 5 – third party Registration Nos. 0542404, 0555189, 1936870, 2691907, 2965646 and 3155482. Finally, applicant advertises its STANDARD (with design) goods as being a “quality category” having “increased cutting efficiency, longer life, excellent value for the money.” See Attachment 6 – applicant’s Web site.
The following is the accepted standard format for a disclaimer:
No claim is made to the exclusive right to use “STANDARD” apart from the mark as shown.
TMEP §1213.08(a)(i).
Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark. TMEP §1213.01(b).
A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark. TMEP§1213. A disclaimer does not affect the appearance of the applied-for mark. See TMEP§1213.10.
ALSO, APPLICANT SHOULD NOTE THE FOLLOWING ADVISORIES THAT APPLY TO APPLICATIONS FILED UNDER SECTION 66(A) OF THE TRADEMARK ACT:
§66(a) Applications – Applicant May not Amend or Add to Filing Bases
§66(a) Applications – Classification of Goods/Services cannot be Changed
RESPONDING TO THIS OFFICE ACTION
There is no required format or form for responding to an Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
The response should address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.
The response must be personally signed or the electronic signature manually entered by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants). TMEP §§605.02, 712.
If the applicant has any questions or needs further assistance, please telephone the assigned examining attorney.
/Myriah A. Habeeb/
Myriah A. Habeeb
Trademark Examining Attorney
Law Office 105
Phone - (571) 272-8909
Fax - (571) 273-89
RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.