Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

FIRST OFFICE ACTION

 

 

INTERNATIONAL REGISTRATION NO. 1217716

 

STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION:  TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.

 

In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  To do so, enter the U.S. application serial number for this application and then select “Documents.”  The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

 

This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application.  See 15 U.S.C. §1141h(c).  See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.

 

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(a), 2.65(a); TMEP §§711, 718.03.

 

 

Section 2(d) Refusal – Likelihood Of Confusion

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1557789, 1757575, 2929329, 4057600, 4072803 and 4452900.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See 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 a potential consumer would be confused, 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).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

Here, the applicant applied to register the mark USP for machines and machine parts (included in this class) for metal working and treatment; machine tools; parts of machine tools (included in this class); motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles)  in International Class 7; electric and electronic apparatus and instruments (included in this class), namely scientific, surveying, optical, weighing, measuring, signaling and control apparatus and instruments; magnetic data carriers, digital data carriers; data processing equipment, computers; computer software in International Class 9; and apparatus for heating, steam generating, refrigerating, drying, ventilating and water supply purposes in International Class 11.

 

The registered marks are USP for, inter alia, yarn clearers in International Class 7 and testing machines and instruments for textile materials and products; yarn testing apparatus; prerecorded digital data media, namely, DVDs and CDs, featuring statistical data and graphic representations concerning textile materials and products, for use with a computer; computer application software used for evaluating results of textile material testing in International Class 9; USP for transient voltage surge suppressors in International Class 9; USP for alarm system components, namely, contacts, glass break detectors, alarm controls, digital keypads, passive infrared detectors, sirens, fire detectors, pressure mats, and emergency switches in International Class 9; USPM for spectroscopes for measuring lens reflectance; microscopes in International Class 9; USPA and design for, inter alia, bidets; water purifiers for household purposes; bath tubs; showers; toilet seats; urinals; shower enclosures in International Class 11; and USP STRUCTURAL CONNECTORS for inter alia, computer software for the design of buildings utilizing metal plates, brackets and connectors in their construction in International Class 9. 

 

Similarity of the Marks

 

U.S. Registration Nos. 1557789, 1757575 and 4452900

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, 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)-(b)(v). 

 

In the present case, applicant’s mark is USP and registrants’ marks are USP.  Thus, the marks are identical in terms of appearance and sound.  In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrants’ respective goods and/or services.

 

The fact that the marks are identical “weighs heaving against applicant.”  In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).  “The greater the similarity in the marks, the lesser the similarity required in the goods or services of the parties to support a finding of likelihood of confusion.”  3 J. McCarthy, McCarthy on Trademarks and Unfair Competition, §23:20.1 (4^th ed. 2000).  See also In re Concordia International Forwarding Corp., 222 USPW 355 (TTAB 1983). 

 

Therefore, the marks are confusingly similar. 

 

U.S. Registration Nos. 4057600 and 4072803

When comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to the source of the goods and/or services offered under applicant’s and registrant’s marks is likely to result.  Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); Edom Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012); TMEP §1207.01(b).  The focus is on the recollection of the average purchaser, who normally retains a general rather than specific impression of trademarks.  L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).

 

Here, the applicant’s mark is highly similar to the registrants’ marks.  The applicant has merely deleted the final letter in the registrants’ marks, and (in U.S. Registration No. 4072803), deleted the design element.

 

When comparing marks that consist of a series of two or more letters, confusion may be likely even if the letters are not identical or in the same order.  It is more difficult to remember a series of arbitrarily arranged letters than to remember words or figures; that is, confusion is more likely between arbitrarily arranged letters than between other types of marks.  See, e.g., Weiss Assoc. v. HRL Assoc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (finding confusion between TMS and TMM); Dere v. Inst. for Scientific Info., Inc., 420 F.2d 1068, 164 USPQ 347 (C.C.P.A. 1970) (finding confusion between ISI and I.A.I.); cf. In re Infinity Broad. Corp. of Dallas, 60 USPQ2d 1214 (TTAB 2001) (finding confusion between registrant’s KING FM and KING-TV and applicant’s KYNG).

 

This principle was set forth in Crystal Corp. v. Manhattan Chem. Mfg. Co., 75 F.2d 506, 506, 25 USPQ 5, 6 (C.C.P.A. 1935), wherein the Court of Customs and Patent Appeals applied the following reasoning in holding Z.B.T. likely to be confused with T.Z.L.B. for talcum powder:  “We think it is well known that it is more difficult to remember a series of arbitrarily arranged letters than it is to remember figures, syllables, words or phrases.  The difficulty of remembering such lettered marks makes confusion between such marks, when similar, more likely.”

 

Even lettered marks having only two letters in common, used on identical or closely related goods, have been held likely to cause confusion.  See, e.g., Feed Serv. Corp. v. FS Servs., Inc., 432 F.2d 478, 167 USPQ 407 (C.C.P.A. 1970) (finding confusion between FSC and FS); Cluett, Peabody & Co. v. J.H. Bonck Co., 390 F.2d 754, 156 USPQ 401 (C.C.P.A. 1968) (finding confusion between TTM and T.M.T.); Edison Bros. Stores, Inc. v. Brutting E.B. Sport-Int’l GmbH, 230 USPQ 530 (TTAB 1986) (finding confusion between EB and EBS); see also TMEP §1207.01(b)(ii)-(iii).

 

Here however, the applicant’s mark contains the first three letters in the registrants’ marks, in the same order.  The marks are highly similar in sound and appearance.

 

Therefore, the marks are confusingly similar. 

 

U.S. Registration No. 2929329

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751.

 

In the instant case, the dominant feature of the mark is USP.  The deletion of the descriptive and disclaimed term “STRUCTURAL CONNECTORS” from the registered mark does not distinguish it from the registered mark.

 

The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as the registered mark, and there is no other wording to distinguish it from the registered mark.

 

Therefore, the marks are confusingly similar. 

 

Accordingly, since the marks are so similar in sound, appearance, and overall commercial impression, confusion as to source is likely.

 

 

 

Relationship Between the Goods

With respect to applicant’s and registrant’s goods and/or services, the question of likelihood of confusion is determined based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-70, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). 

 

Absent restrictions in an application and/or registration, the identified goods and/or services are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described.  See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). 

 

In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers.  Therefore, it is presumed that these goods and/or services travel in all normal channels of trade, and are available to the same class of purchasers.  Further, the application use(s) broad wording to describe the goods and/or services and this wording is presumed to encompass all goods and/or services of the type described, including those in registrant(s)’s more narrow identification.

 

Accordingly, since there is no overriding factor to distinguish applicant’s mark from the marks already registered, registration must be refused because the average purchaser would be likely to conclude that applicant’s goods and those cited in U.S. Registration Nos. 1557789, 1757575, 2929329, 4057600, 4072803 and 4452900 emanate from a common source of origin.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

 

Requirements

 

Identification Of Goods – International Class 7

The identification of goods is indefinite and must be clarified because the identification must be specific, definite and concise.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

The identification of goods also 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. 

The following substitute wording is suggested, if accurate:  “Machines and machine for metal working and treatment, namely, [identify each and every product using common commercial terms, e.g., metal working machines, milling machines and grinding machines for the treatment of metal]; machine tools, namely, [identify each and every product using common commercial terms, e.g., broaches, chasers, lathes, machine tools for breaking up road surface material and machine tools for forming, riveting, swaging, and flaring of metal]; parts of machine tools, namely, [identify each and every product using common commercial terms, e.g., molding and die-casting tools in the nature of steel pins and molding presses being machine parts for dies and molds]; motors and engines except for land vehicles; machine coupling and transmission components except for land vehicles.”

 

Identification Of Goods – International Class 9

The identification of goods is indefinite and must be clarified because the identification must be specific, definite and concise.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

An identification for computer software must specify the purpose or function of the software.  See TMEP §1402.03(d).  If the software is field-specific, the identification must also specify the field of use.  Id.  Clarification of the purpose, function, or field of use of the software is necessary for the USPTO to properly examine the application and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).

 

As stated previously herein, the identification of goods also 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. 

 

The following substitute wording is suggested, if accurate:  “Electric and electronic apparatus and instruments, namely scientific, surveying, optical, weighing, measuring, signaling and control apparatus and instruments in the nature of [identify each and every product using common commercial terms, e.g., scientific instrument in the nature of electronic analyzers for testing consumer products for the presence of contaminants, surveying instruments, blank optical discs, electronic and optical communications instrument in the nature of digital transmitter, weighing machines, weighing scales, distance measuring apparatus, coordinate measuring machines, laboratory equipment and supplies in the nature of thermometers, digital signal processors, emergency signal transmitters, brake controllers and electric control panels]; blank magnetic data carriers, blank digital data carriers; data processing equipment, computers; computer software for [specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use].

 

Identification Of Goods – International Class 11

The identification of goods is too broad and must be clarified because it contains goods that could be classified in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, heating apparatus could include medical products that are properly classified in International Class 10.  The identification must be specific, definite and concise.

 

The following substitute wording is suggested, if accurate:  “Apparatus for heating, steam generating, refrigerating, drying, ventilating and water supply purposes, namely, [identify each and every product using common commercial terms, e.g., floor heating apparatus, heating apparatus for vehicles, steam generators, hot water tanks, refrigerators, laundry drying machines, electric dish dryers, electric hair dryers, portable electric warm air dryer, ventilating exhaust fans, ventilation hoods, ventilation unites for commercial food preparation and food serving, and ventilation apparatus in the nature of cordless floor drying cone dolly, apparatus for filtering drinking water and apparatus for disinfecting water].”

 

Advisory – Identification Of Goods/Services

In a Trademark Act Section 66(a) application, classification of goods and/or services may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Additionally, classes may not be added or goods and/or services transferred from one class to another in a multiple-class Section 66(a) application.  37 C.F.R. §2.85(d); TMEP §1401.03(d). 

 

Additionally, an applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

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

 

 

Advisory – Drawing Page

The drawing page contains spotting and uneven lines.  A clear drawing of the mark is an application requirement.  37 C.F.R. §2.52.  Therefore, the typed drawing will be reentered by the Trademark Office with clean, sharp and solid lines.

 

 

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:  Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01.  If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response.  37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01.  Qualified U.S. attorneys include those 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.  See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01.  Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing.  See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02.  The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing.  37 C.F.R. §2.193(d); TMEP §611.01(b).

 

In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal).  See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01. 

 

DESIGNATION OF DOMESTIC REPRESENTATIVE:  The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served.  TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2).  Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp. 

 

 

Applicant’s Response

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and email technical questions to TEAS@uspto.gov.

 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

/Andrea Koyner Nadelman/

Andrea Koyner Nadelman

Trademark Examining Attorney

Law Office 110

571-272-9370

andrea.nadelman@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.