UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/068761
MARK: TESS
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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: Tess AS
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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. 1002572
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 who represent applicants residing in Canada and who have received reciprocal recognition by the USPTO under 37 C.F.R. §11.14(c).
37 C.F.R. §§11.1, 11.14; 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) REFUSAL – LIKELIHOOD OF CONFUSION
THIS REFUSAL APPLIES ONLY TO THE GOODS IN CLASS 016 SPECIFIED HEREIN
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. 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.
Comparison of the Marks In General
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).
Comparison of the Goods/Services in General
Analysis of the Marks
Applicant’s mark, TESS, shares the identical term TESS that comprises the dominant feature of the registered mark, TESS BROUSSARD, and therefore is confusingly similar to the registered mark in sound, appearance, meaning or connotation, and overall commercial impression.
Here, the initial and dominant or only wording in each of the marks is TESS. Although the registered mark includes the wording BROUSSARD and applicant’s mark does not, please note that the mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Optical Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(b)(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.
In this case, the mere deletion of the secondary wording BROUSSARD from the registered mark does not create a commercial impression distinct enough to overcome the likelihood of confusion under Trademark Act Section 2(d).
In this case, a consumer encountering the mark TESS in connection with applicant’s goods will incorrectly believe that the goods originate from the same source as the registrant’s TESS BROUSSARD goods.
Analysis of the Goods
Applicant’s mark and the registered mark share the TESS component and therefore are confusingly similar. In addition, the applicant’s goods are closely related to the registrant’s goods. Applicant’s goods in International Class 016 are:
Paper, cardboard and goods made of these materials (not included in other classes)
Registrant’s goods are:
Printed matter, namely, books, biographies, magazines, periodicals, booklets, brochures, newsletters and pamphlets, all on the subjects of entertainment, music, models, actors and film; posters; calendars; stationery; scripts; bumper stickers; postcards; photographs; catalogues in the fields of entertainment, music and film; greeting cards; signboards of paper or cardboard; stickers; printed tickets; writing instruments
To the extent that both of the parties provide various printed matter, the goods are closely related if not identical.
When the application describes the goods broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the application encompasses all goods of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive . . . . There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold.”); TMEP §1207.01(a)(iii).
In other words, the broadly worded “Paper, cardboard and goods made of these materials (not included in other classes)” offered by applicant encompasses the more definite printed matter offered by registrant. Neither the application nor the registration(s) contain any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are offered everywhere that is normal for such items, i.e., bookstores or paper supply stores. Thus, it can also be assumed that the same classes of purchasers seek these goods and that consumers are accustomed to seeing them offered under the same or similar marks.
Summary of Analysis
A consumer encountering the mark TESS in connection with applicant’s printed matter will incorrectly believe that the goods originate from the same source as the registrant’s TESS BROUSSARD printed matter. As a result, because of the confusingly similar marks and closely related and potentially identical goods, registration is refused under Trademark Act Section 2(d). 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.
Applicant’s Options
(1) Deleting the class to which the refusal pertains;
(2) Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition in the classes to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110.05, 1403.03 (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).
IDENTIFICATION AND CLASSIFICATION OF GOODS/SERVICES
In almost all of the classes, the identification of goods and/or services contains parentheses. Generally, parentheses and brackets should not be used in identifications. Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).” TMEP §1402.12. Therefore, applicant must remove the parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description.
In International Class 004, the wording “dust absorbing compositions” requires clarification as to the purpose, e.g. road building, sweep, dustlaying. If accurate, applicant may amend this wording to “Petroleum based dust absorbing compositions for use in road building.” The wording “fuels (including motor spirits) and illuminants” requires clarification because it could encompass goods in other International Classes such as “fuels for nuclear reactors” in International Class 001 or “Lights for use in illuminating signs and displays” in International Class 011. Applicant may amend this wording to “fuels, namely, motor fuels and illuminants, namely, candles.” The wording “wicks” must be clarified to be “wicks for candles” because “Fragrance emitting wicks for room fragrance” are in International Class 003.
In International Class 006, the wording “components for pipes of metal” and “components of metal for air hoses for compressed air” must be clarified because applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names. TMEP §§1402.01 and 1402.03(a). Applicant may clarify this wording to identify “elbows” or “metal junctions” or “couplings,” etc. The wording “couplings of metal” requires clarification because it could encompass goods in other International Classes such as “Couplings for machines” in International Class 007. The wording “valves of metal (not engine parts)” requires clarification because although it excludes “engine parts,” the goods must also be clarified as “not being parts of machines” to remain in International Class 006.
In International Class 007, the wording “engines” requires clarification because it could encompass goods in other International Classes such as “fire engines” in International Class 009 or “automobile engines” in International Class 012. Applicant may amend this wording to “engines not for land vehicles” to remain in International Class 007. The wording “driving belts, driving chains, couplings and engine belts” is unclear as to the nature of the goods and applicant may clarify that the goods are “belts for machines” or “transmission chains other than for land vehicles” or “namely, couplings for machines” or “fan belts for engines”. In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §§1402.01 and 1402.03(a). The wording “fluid drive arrangements” is equally indefinite and unclear as to the nature of the goods. Applicant may clarify that the goods are “Variable speed drives for use with fluid pumping systems” to remain in International Class 007. The wording “mechanical driven hand tools” requires clarification because it could encompass goods in other International Classes such as “chisels” in International Class 008. While all hand-operated or manually-operated tools (that is, tools powered by hand, not an external power source) are in Class 8, note that not all hand HELD tools are in Class 8 since many power tools in Class 7 are also hand held. Applicant may amend this wording to identify a power tool in International Class 007 by its common commercial name such as “Power-operated hand-held crimpers.”
In International Class 008, the wording “Hand tools and hand instruments (manual driven)” is unacceptable because, as explained above, the wording could encompass goods in International Class 007. Applicant may amend this wording to “Hand-operated sharpening tools and instruments” or indicate the common commercial name of the tools in International Class 008 only.
In International Class 009, the wording “CD-records” and “magnetic databases” must be clarified by indicating (a) whether the goods are CDs or records or “magnetic data carriers” and (b) what the subject matter or area of use is or else specifying that they are blank. Applicant may amend this wording to “blank recordable CDs and blank magnetic data carriers.” The wording “welding apparatus” requires clarification because it could encompass goods in International Class 007 such as “gas welding guns” or “laser welding machines.” Applicant may clarify that these goods are “electric arc welders” or “welding torches” to remain in International Class 009. The wording “protective equipment” is indefinite. In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words such as “equipment,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names. TMEP §§1402.01 and 1402.03(a).
In International Class 016, the wording “paper, cardboard and goods made from these materials, (not included in other classes)” is too indefinite and is not clear as to the specific paper and cardboard goods (e.g., boxes of paper or cardboard, cardboard packaging, packing paper).
In International Class 017, the wording “Caoutchouc” requires clarification as to the common commercial or generic names for the goods and applicant may indicate that these goods are “untreated natural rubber.” The wording “goods made from these materials” is too indefinite and is not clear as to the specific type of goods (e.g., ornaments made of rubber). The wording “extruded plastic as wrought products” requires clarification because it appears to indicate that the plastic is a finished product such as “plastic extruded decorative and protective trim” in International Class 012 rather than for use in production of other products. Applicant may amend this wording to “Plastics in extruded form used in production.” The wording “materials for jointing, packing and insulation” requires clarification because, as explained above, in the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant uses indefinite words such as “materials,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names. TMEP §§1402.01 and 1402.03(a).
In International Class 037, the wording is acceptable.
Applicant may adopt the following identification, if accurate:
“Industrial oils and greases; lubricants; Petroleum based dust absorbing compositions for use in road building; fuels, namely, motor fuels and illuminants, namely, candles; candles and wicks for candles” in International Class 004; and/or
“Components for pipes of metal, namely, metal elbows for pipes, pipe couplings [delete parentheses] of metal, couplings [delete parentheses] of metal for pipes, pipes, pipe connections and pipelines, all of metal, flexible steel tubes, drums of metal [delete parentheses] not engine parts for flexible pipes, components of metal for air hoses for compressed air, namely, compressed air pipe fittings of metal, cramps of metal for metal wires, valves of metal not engine parts and not being parts of machines” in International Class 006; and/or
“Engines not for land vehicles; driving belts, namely, belts for machines, driving chains, namely, transmission chains other than for land vehicles, couplings for machines and engine belts, namely, fan belts for engines [delete parentheses] none of the mentioned articles for vehicles, fluid drive arrangements, namely, variable speed drives for use with fluid pumping systems [delete parentheses] not for vehicles, presses, namely, engines for industrial use, belts for dynamos and lifts, pipe bending machines, mechanical driven hand tools, namely, power-operated hand-held crimpers, fan belts for engines [delete parentheses] not engines for vehicles, conveyor belts” in International Class 007; and/or
“Hand tools and hand instruments [delete parenthesis] manual driven, namely, hand-operated sharpening tools and instruments” in International Class 008; and/or
“Blank recordable CDs and blank magnetic data carriers; fire extinguishers; welding apparatus, namely, electric arc welders; protective clothes; protective equipment, namely, fall protection equipment for fall restraint and fall arrest, namely, harnesses” in International Class 009; and/or
“Paper, cardboard and goods made of these materials, namely, cardboard boxes” in International Class 016; and/or
“Caoutchouc, namely, untreated natural rubber, gutta-percha, rubber, asbestos, mica and goods made of these materials, namely, ornaments of rubber; Plastics in extruded form used in production; materials for jointing, namely, jointing material for masonry and packing and insulating material; flexible pipes [delete parentheses] not metal” in International Class 017; and/or
“Rental of construction machines and cleaning machines” in International Class 037.
Descriptions of goods and/or services found in earlier-filed applications and registrations are not necessarily considered acceptable identifications when a later-filed application is examined. See TMEP §§702.03(a)(iv), 1402.14.
For guidance on writing identifications of goods and/or services, please use the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html, which is continually updated in accordance with prevailing rules and policies. See TMEP §1402.04.
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. 37 C.F.R. §2.85(d);TMEP §§1401.03(d), 1904.02(b).
Therefore, applicant must provide a description of the applied-for mark. The following is suggested:
The mark consists of the stylized wording “TESS”.
If applicant has questions about its application or needs assistance in responding to this Office Action, please contact the assigned trademark examining attorney directly at the number below or at Tasneem.Hussain@uspto.gov. Please note, however, that substantive matters must be addressed in a formal manner; see below for further instructions on how to respond to this Office Action.
/Tasneem Hussain/
Trademark Examining Attorney
Law Office 105
(571) 272-8273
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.