UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

 

ISSUE/MAILING DATE:

 

 

INTERNATIONAL REGISTRATION NO. 0971738.

 

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:

 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.

 

 

SECTION 2(D) – LIKELIHOOD OF CONFUSION REFUSAL

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2601328 and 2785912.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See Attachment 1 – the enclosed registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

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

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

 

Here, applicant’s mark, BASIC (with design), is confusingly similar to the registered marks, BASIK and BASIC, respectively.  All of the marks consist of a phonetic equivalent of the term BASIC. 

 

With respect to Registration No. 2601328, the marks are essentially phonetic equivalents and thus sound similar.  Similarity in sound alone may be sufficient to support a finding of likelihood of confusion.  RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB 1975); see TMEP §1207.01(b)(iv).  Moreover, to the extent that the registration depicts the mark in typed form, registrant may use the mark with a design that is similar to applicant’s mark.  A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element itself and not in any particular display.  TMEP §1207.01(c)(iii); see 37 C.F.R. §2.52(a).  Thus, a mark presented in stylized characters or otherwise in special form will not generally avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display.  See, e.g., In re Melville Corp., 18 USPQ2d 1386, 1387-88 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988).

 

With respect to Registration No. 2785912, the literal elements of the marks are identical.  Despite the differences of stylization and applicant’s inclusion of a design element, purchasers are likely to be confused.  Specifically, 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.  Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729, 735 (TTAB 1976); TMEP §1207.01(c)(ii).  When purchasers call for the goods, they will use identical sounding marks.

 

Ultimately, 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 similarities between the marks.  Thus, the marks are confusingly similar.

 

 

Relatedness of the Goods

 

The goods of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

 

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, “end mills, carbide end mills, coated end mills, radius and angle dressers, square tool bits, drill bits and taps” and “wood floor cleaning preparations,” respectively.

 

With respect to Registration No. 2601328, both applicant and registrant have identified dressing tools.  Moreover, purchasers are accustomed to encountering mills, dressers, and tool bits, as identified in the registration and tools for machine tools, saws and hand tools, as identified in the application offered under a single trademark. See Attachment 2 – third party Registration Nos. 1429846, 1870242, 1901460, 1930477, 2733041, 3072993, 3073477, 3327666, 3439077, 3455564 and 3469448. 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. 2785912, 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, 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 the registrant’s more specific identification, that they move in all normal channels of trade, and that they are available to all potential customers.  See TMEP §1207.01(a)(iii); see, e.g., In re Americor Health Servs., 1 USPQ2d 1670, 1670-71 (TTAB 1986); In re Equitable Bancorporation, 229 USPQ 709, 710 (TTAB 1986).

 

When purchasers encounter the identical and related goods of applicant and registrants, they are likely to be confused as 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

 

The wording “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” in the identification of goods is indefinite and must be clarified because it is indefinite and it does not allow for proper identification of applicant’s goods.  See TMEP §1402.01.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  See id.

 

Also, the identification of services is indefinite and must be clarified because it includes the open-ended wording “in particular.”  See TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  Therefore, this wording should be deleted and replaced with “namely.”  Applicant may amend the identification to list only those services that are within the scope of the services set forth in the application or a previously accepted amendment to the identification.  See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.

 

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

 

Class 03  –	“Cleaning, polishing and abrasive preparations; polishing and abrasive pastes; polishing and abrasive paper, strips and films.”
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.”
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

 

Identifications of goods can be amended only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

 

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 BASIC to the left of a five-point star; the color blue appears in the term BASIC and in the five-point star.

 

TMEP §807.07(a)(ii).

 

 

Significance of Mark Required

 

Applicant must explain whether “BASIC” has any meaning or significance in the industry in which the goods are manufactured, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.

 

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 BASIC in the application because it means “Of, being, or serving as a starting point or basis,” which describes the quality of applicant’s goods. See Attachment 3 – definition of BASIC. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). Moreover, this Office consistently requires BASIC to be disclaimed for similar goods. See Attachment 4 – third party Registration Nos. 2246570, 2269371, 3136577 and 3149600. Finally, applicant advertises its BASIC (with design) goods as being a “quality category” having “excellent cutting efficiency, long life, the most cost-effective quality category.” See Attachment 5 – applicant’s Web site.

 

The following is the accepted standard format for a disclaimer:

 

No claim is made to the exclusive right to use “BASIC” apart from the mark as shown.

 

TMEP §1213.08(a)(i).

 

The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof.  15 U.S.C. §1056(a).  Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods.  15 U.S.C. §1052(e).  Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic).  See TMEP §§1213, 1213.03. 

 

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

 

For applications originally filed under Trademark Act Section 66(a), the filing basis cannot be changed nor can more than one filing basis be asserted.  37 C.F.R. §§2.34(b)(3), 2.35(a); TMEP §§806.01(e), 1904.01(a).

 

 

§66(a) Applications – Classification of Goods/Services cannot be Changed

 

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).

 

 

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.