UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79154603
MARK: UNITOR
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Wilhelmsen Ships Service AS
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1222113
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.
SUMMARY OF ISSUES that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant will note that the refusals are limited as follows:
· For Registration No. 2342310, this refusal only applies to the goods and services in Classes 1, 3, 6, 7, 8, 9, 11, 17, 37, and 42.
· For Registration Nos. 2623873, 2623874 and 3967976, this refusal only applies to the "cleaning, polishing, scouring, degreasing and abrasive preparations" in Class 3.
· For Registration No. 2140250, this refusal only applies to the goods and services in Class 7
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.
Comparison of the Marks:
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); TMEP §1207.01(b).
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 terms of their overall commercial impression that confusion as to the source of the goods and/or services offered under the respective 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); In re Davia, 110 USPQ2d 1810, 1813 (TTAB 2014); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049, (TTAB 2014); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); TMEP §1207.01(b).
Applicant’s mark is UNITOR displayed in a stylized format for a wide variety of goods in numerous classes, including Classes 1, 3, 6, 7, 8, 9, 11, 17, 37, and 42.
The registered marks are:
(1) UNITOR for a wide variety of goods in various classes, including 1, 3, 6, 7, 8, 9, 11, 17, 37, and 42.
(2) UNITERS (and design) for preparations for the cleaning, maintaining and care of leather and hide, namely, creams and waxes
(3) UNITERS for preparations for the cleaning, maintaining and care of leather and hide, namely, creams and waxes
(4) UNITERSPURE (and design) for preparations for the cleaning, maintaining and care of leather and hide, namely, creams and waxes
(5) UNITORQ for mechanical, pneumatic, hydraulic and spring return valve actuators
Generally, for a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods and/or services. Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)). Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Here, applicant’s and registrants’ marks each share the same (or phonetically-equivalent) dominant, literal term, namely, UNITOR (or UNITERS).
Therefore, these marks are confusingly similar.
In sum, given the highly similar appearance and sound of the marks, it follows that the marks create a highly similar commercial impression and therefore the marks are confusingly similar.
Comparison of the Goods:
Applicant’s goods are, in part: "Chemicals used in industry and science" in class 1; "cleaning, polishing, scouring, degreasing and abrasive preparations" in class 3; "Common metals and their alloys" and "goods of common metal not included in other classes" in class 6; "electric welding machines end apparatus; gas welding machines . . . compressors for refrigerators and refrigerating plants . . . equipment, apparatus and machines for the treatment and preparation of surfaces . . . equipment, apparatus and machines for the application of paint and coatings to surfaces; paint spraying equipment and apparatus, high pressure washing equipment and apparatus; air tools, air compressors; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); pumps and pump systems and installations, including pumps and pump systems and pump installations for dosing and circulation of chemicals and liquids; parts and fillings for all the aforementioned goods" in class 7; "non-electric welding apparatus and welding tools" in class 8; "Scientific, nautical, surveying, photographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments" in class 9; "Apparatus for lighting, heating, steam generating, cooking, cooling, refrigerating, drying, ventilating, water supply and sanitary purposes" and "parts and fittings for all the aforementioned goods" in class 11; "flexible hoses and tubes, not of metal; hose couplings, not of metal; pipe connections, not of metal; hose fittings, not of metal" in class 17; "installation, inspection, maintenance and repair of fire-fighting and rescue and safety apparatus and systems; installation, inspection, maintenance and repair of refrigerating, heating, ventilating and air conditioning apparatus and systems; installation, inspection, maintenance and repair of thermal insulation; installation, inspection, maintenance and repair of electrical installations and systems, including electro automation installations and systems; installation, inspection, maintenance and repair of gas distribution apparatus and systems, installation, inspection, maintenance and repair of central welding and gas and inert gas installations" in class 37; and "Scientific and technological services and research, including design and analysis" in class 42.
The respective goods of applicant and registrants are similar as follows:
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
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 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 registrants’ more narrow identification.
In total, the marks create the same commercial impression and the evidence shows that the goods are commercially related and likely to be encountered together in the marketplace by consumers. Therefore, consumers are likely to be confused and mistakenly believe that the goods originate from a common source. Therefore, there is a likelihood of confusion and registration must be refused under Section 2(d) of the Lanham Act.
Prior Pending Application
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
OWNERSHIP OF CITED REGISTRATION
(1) Record the assignment with the International Bureau and promptly notify the trademark examining attorney that the assignment has been duly recorded;
(2) Submit copies of documents evidencing the chain of title; or
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration No. 2342310.”
TMEP §812.01; see 15 U.S.C. §1141l; 37 C.F.R. §§2.193(e)(1), 3.73, 7.22; TMEP §502.02(b).
Merely recording a document with the International Bureau does not constitute a response to an Office action. See TMEP §503.01(d).
DESCRIPTION OF MARK
The mark consists of the word UNITOR in a stylized format.
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
Failure to respond to a request for information is an additional ground for refusing registration. See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
IDENTIFICATION OF GOODS AND SERVICES
Class 17 "stoppers of . . . plastics"
Class 36 "dealing with shipping formalities relating to customs, port, passport, and health services"
Class 37 "services of . . . destruction . . . for sea and ocean going rigs, vessels, and platforms" and "building . . . of machines" and “inspection” services not clearly related to building
Class 39 "inspection of vehicles, ships, and/or goods before transport" and "including agency for ship clearance with customs, harbour, immigration and health authorities"
See TMEP §1904.02(c)(iii).
An acceptable identification of goods and/or services is required in a U.S. application based on Trademark Act Section 66(a). See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.01(c). For Section 66(a) applications, the scope of the identification for purposes of amendment is limited by the international class assigned to the goods and/or services by the International Bureau of the World Intellectual Property Organization (International Bureau). 37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c). 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.
Applicant may respond by amending this wording to clarify the nature of the goods and/or services; however, any future amendment to the identification must identify goods and/or services within International Classes 17, 36, 37, and/or 39 and be within the scope of the wording in the initial application. See TMEP §§1402.01(c), 1402.07(a), 1904.02(c)(iii). If an applicant amends an identification to a class other than that assigned by the International Bureau, the amendment will not be accepted. TMEP §§1402.01(c), 1904.02(c).
Alternatively, applicant may delete this unacceptable wording from the identification. See TMEP §1904.02(c)(iii)-(iv). However, once an application has been expressly amended to delete goods and/or services, those items generally may not later be re-inserted. See TMEP §1402.07(e).
If applicant believes classification by the International Bureau was in error, applicant may contact the International Bureau and request correction of, or recordation of a limitation to, the international registration. TMEP §1904.02(c)(iv), (e)(i)-(e)(ii). However, filing such a request with the International Bureau is not considered a formal response to this Office action. See TMEP §1904.02(c)(iv), (e)(iii). Applicant must also file a timely and complete response to this Office action, stating that applicant has filed a request for a correction or to record a limitation with the International Bureau that will resolve the outstanding issue. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§711, 718.03, 1904.02(c)(iv), (e)(iii).
The identification of goods and/or services in the application is not acceptable because it includes the heading of one or more international classes. The purpose of class headings is to indicate the subject matter and general scope of each international class of goods and/or services. See TMEP §§1401.02(a), 1401.08. While such broad designations may be acceptable under the trademark laws and practices of other countries, the USPTO considers these headings too broad to identify goods and/or services in a U.S. application. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296, 1298-99 (TTAB 1986), rev’d on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); TMEP §§1401.08, 1402.01(c), 1402.07(a).
The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark. In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)). Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).
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. For amendments to identifications consisting of class headings, the scope of the identification is limited by both the ordinary meaning of the words and the international class assigned by the International Bureau of the World Intellectual Property Organization. See 37 C.F.R. §2.85(d), (f); TMEP §§1402.06(a), (b), 1402.07(a), 1904.02(c).
Thus, applicant must amend the class heading(s) to identify specific goods and/or services that fall within (1) the ordinary meaning of the words specified in the class heading(s), and (2) the international classification of the heading(s). See TMEP §§1402.06(a), (b), 1402.07(a), 1904.02(c).
Although not all of the wording in the identification of goods and services is included in the class heading, some of the wording is still indefinite and must be clarified as noted below.
In class 1, "gases" must specifically state the type of gas and/or purpose. Cleaning chemicals, chemical spell solutions, and surface-active chemical agents must specify the type of chemical or purpose. The wording for various preparations and substances in the class 1 must further clarify that such goods are chemicals and/or the purpose of such goods. Suggestions regarding the specific indefinite wording are highlighted in bold below.
In class 2, the preservatives must specify that they are in the nature of coatings. Suggestions regarding the specific indefinite wording are highlighted in bold below.
In class 3, "other substances" is indefinite and must be identified. Industrial abrasives must specify the field of use. Suggestions regarding the specific indefinite wording are highlighted in bold below.
In class 6, common metals and their alloys must clarify that they can be in wrought or semi-wrought form or the specific goods made from such metals must be identified. Metal building materials must include the type of building materials. Ironmongery must clarify the type of iron goods because such goods can be classified in multiple classes based on the purpose of such goods. Various goods in class 6 must specify that they are made of metal. Suggestions regarding the specific indefinite wording are highlighted in bold below.
In class 7, the wording for surface type machines, high pressure washing machines, and air tools must include the type of machine. Suggestions regarding the specific indefinite wording are highlighted in black below.
In class 8, wording is indefinite because the types of hand tools are not identified in enough detail. Suggestions regarding the specific indefinite wording are highlighted in black below.
In class 9, some of the various devices and systems must include the type of device and the components that make up the systems. Suggestions regarding the specific indefinite wording are highlighted in bold below.
In class 11, the wording "provision stores (cooled)" is indefinite and must be amended 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. Suggestions regarding the specific indefinite wording are highlighted in bold below.
In class 17, the wording for extruded plastic must specify the form of the plastic such as bars or pellets. The wording for jointing and gaskets must specify the type of materials used in joints and the type of gaskets. Hoses and tubes must specify that they are made of plastic. Hose coupling and pip connections must specify the type of non-metal material composition of these goods. As noted above, plastic stoppers are misclassified and indefinite. Suggestions regarding the specific indefinite wording are highlighted in bold below.
In class 36, applicant must specify the common commercial or generic name for the services. If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). As noted above, some of the wording in class 36 is indefinite and does not appear to identify any services in class 36. As such, no suggestions can be given for such wording.
Further, the service of "dealing with shipping formalities relating to customs, port, passport and health services" is duplicative of the services in class 35 and is not permitted. A single product that has a plurality of uses may be classified in two or more international classes. TMEP §1401.05(c); see Ex parte Schatz, 87 USPQ 374, 375-76 (Comm’r Pats. 1950). However, using identical language to describe the goods in more than one international class is not permitted. TMEP §1401.05(c).
In class 37, some of the wording is indefinite and applicant must specify the common commercial or generic name for the services. If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). Suggestions regarding the specific indefinite wording are highlighted in bold below. As noted above, some of the wording in class 37 is indefinite and does not appear to identify any services in class 37. As such, no suggestions can be given for such wording.
In class 39, some of the wording is indefinite and applicant must specify the common commercial or generic name for the services. If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). Suggestions regarding the specific indefinite wording are highlighted in bold below. As noted above, some of the wording in class 37 is indefinite and does not appear to identify any services in class 39. As such, no suggestions can be given for such wording.
In classes 41 and 42, some of the wording merely reflects the heading of the class and must be further clarified.
Throughout the identifications, the word "including" is used. Such wording is open-ended and thus indefinite. Applicant should delete "including" and replace it with a more definite term such as "namely." Further, brackets generally should not be used in identifications because the USPTO generally uses these punctuation marks to indicate goods and/or services that have been deleted from registrations. See TMEP §1402.12.
In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another. 37 C.F.R. §2.85(d); see TMEP §§1402.07(a), 1904.02(c).
Therefore, any modification to this wording must identify goods and/or services in International Classes 1, 2, 3, 6, 7, 8, 9, 11, 17, 35, 36, 37, 39, 41, and 42, the classifications specified in the application for these goods and/or services.
The following substitute wording is suggested, if accurate:
Class 1 "Chemicals used in industry and science; chemicals for use in marine and maritime industry and refrigerant gases for use in marine and maritime industry cooling systems; industrial refrigerant gases for use in industrial cooling systems; degreasing and cleaning solvents; chemicals for treating water; chemicals for treating oils and gases; inert gases, namely, argon; unprocessed artificial resins, unprocessed plastics; fire extinguishing compositions, including fire extinguishing gases, foams, powders and liquids; fireproofing and flame resistant preparations , namely, fire retardant chemicals; chemical spill solutions, namely, chemical compositions for solidification of fluids and for absorbing spills; surface-active chemical agents for general use in the industrial arts, namely as wetting, spreading, emulsifying, dispersing and penetrating agents; chemical preparations for industrial removal of corrosion and contamination; chemical preparations to break down and decompose oil; chemical preparations for marine and industrial treatment of bunker oil and heavy fuel oil; chemicals, namely, tempering and soldering preparations, welding preparations; chemical preparations for preserving foodstuffs; tanning substances, namely, tanning agents for use in manufacture of leather; adhesives used in industry"
Class 2 "Paints, varnishes and lacquers; coatings, namely, preservatives against corrosion and rust and against deterioration of wood"
Class 3 "Bleaching preparations and other substances for laundry use, namely, laundry bleach and laundry detergent; cleaning, polishing, and scouring preparations; degreasing preparations for [specify type of surface or field of use]; abrasive [specify, e.g., paste, rolls, sand, sheets, strips]; paint and rust removing preparations; industrial abrasives for use in marine and maritime industry; soaps; perfumery; essential oils; cosmetics; hair lotions; dentifrices; polishing paper, abrasive paper, abrasive grinding paper"
Class 6 "Common metals and
their alloys, unwrought or semi-wrought; metal building materials, namely, soffits; transportable buildings of metal; ironmongery, namely,
iron gates; small items of metal hardware, namely, washers; pipes and tubes of metal; goods of common metal not included in other classes, namely, plaques
use as awards; gas containers, namely, metal containers for compressed gas; consumables for welding, namely, metal welding rods and wires; welding metals; parts and fittings for refrigerators, namely, metal door frames for refrigerating rooms; metal ores; parts and fittings for all file aforementioned goods"
Class 7 "Machines and machine tools, namely, electric welding machines; gas welding machines; compressors for refrigerators and refrigerating plants; equipment, apparatus and machines for the treatment and preparation of surfaces, namely, machines for blast cleaning a surface; apparatus and machines for sandblasting; equipment, apparatus and machines for grinding, namely, [specify]; equipment, apparatus and machines for the application of paint and coatings to surfaces, namely, [specify]; paint spraying equipment and apparatus being paint sprayers, multi-purpose high pressure washing equipment and apparatus; air tools, namely, air compressors; motors and engines except for land vehicles; machine coupling and transmission components except for land vehicles; pumps and pump systems and installations, namely, pumps, pump installations and pump systems consisting primarily of [specify components of system] for dosing and circulation of chemicals and liquids; parts and fillings for all the aforementioned goods"
Class 8 "Hand tools and
implements that are hand-operated, including, namely, non-electric welding apparatus and welding tools, namely, clamps; fire and
escape related hand tools, namely, fire irons; parts and fittings for all the aforementioned goods"
Class 9 "Scientific, nautical, surveying, photographic, optical, weighing, measuring, signalling, checking and supervision, life-saving and teaching apparatus and instruments, namely, cameras, optical mirrors, surveying instruments, optical inspection apparatus, weighing machines, bevels, signaling whistles, and life jackets; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, electricity limiters, clamp meters for measuring electricity, photovoltaic solar modules for production of electricity, and static electricity eliminators; apparatus for recording of sound, images and data; computer operating software; fire-extinguishing apparatus and installations; fire suppression apparatus, systems and installations, fire prevention apparatus, systems and installations for use in marine vehicles comprised of charged bottles, charge gages, mounting bases and straps, pull cables, nozzles, fittings, tubing, and stickers; fire fighting apparatus, systems and installations for use in marine vehicles comprised of charged bottles, charge gages, mounting bases and straps, pull cables, nozzles, fittings, tubing, and stickers; safety apparatus, installations and equipment, namely, inflatable flotation devices; breathing apparatus, detection and alarm apparatus, systems and installations, namely, underwater breathing apparatus; life saving equipment, namely, life rafts and buoys; protective clothing, namely, disposable garment for protection against spontaneous flash in industrial and manufacturing environments; electrical installation materials, namely, alarms; parts and fittings for all the aforementioned goods"
Class 10 “Medical apparatus and instruments, namely, respirators and masks for artificial respiration, resuscitation apparatus; stretchers; parts and fittings for all the aforementioned goods”
Class 11 "Apparatus for lighting,
heating, steam generating, cooking, cooling, refrigerating, drying, ventilating, water supply and sanitary purposes, including namely, air conditioning and ventilation
installations; provision stores that are cooled, namely, portable refrigerated rooms, freezer and chiller compartments; parts and
fittings for all the aforementioned goods"
Class 17 "Rubber, gutta-percha, gum,
asbestos, mica and goods made from these materials and not included in other classes, namely, [specify]; plastic pellets in extruded
form for use in manufacture; packing, stopping and insulating materials, including namely, moldable compounds for use in jointing and packing;
materials pipe gaskets; flexible pipes, not of metal; flexible plastic hoses and tubes, not of metal; hose couplings, not of metal for use with fire hoses; pipe connections, not of metal, namely rings of rubber for use as pipe connection seals; hose fittings, not of metal; asbestos fire curtains; stoppers of rubber or plastics for bottles; plastic soldering threads; insulating paint; floating booms for the containment
of pollutants; oil absorbent pads for containing and clean-up of oil spills"
Class 35 "Business management; business administration; accounting services; statistical analysis and reporting services for business purposes, namely, cost reporting; cost assessment; inventory management services; outsourcing services and buying services, namely, arranging of buying and selling contracts for third parties; marketing services; dealing with shipping formalities related to customs, port, passport and health services, namely, customs clearance services, shipment processing for business purposes, health care utilization and review services; market research services; import agency and export agency services; freight logistics management, namely, arranging and co-ordinating provision of goods, supplies and fuel and support services for vessel owners, charterers or cargo owners; arranging and supply of marine, maritime and industrial spare parts and machinery for vessel owners, charterers or cargo owners; employment agency services for the provision of crew and staff for vessel owners, charterers or cargo owners; manning services, namely, employment recruiting; information and consultancy related to all the aforementioned services"
Class 36 "Insurance
brokerage services provided by shipping agencies, namely prospecting and conclusion in the nature of vessel and freight insurance for ship owners; dealing with shipping formalities relating to customs, port, passport and health services; insurance services, namely, writing property and casualty
insurance; insurance brokerage; insurance agency services; accident insurance underwriting services; re-insurance underwriting services; providing financial loss assessment services to ship owners; loss adjustment services; debt factoring agency services; customs brokerage,
customs clearance of cargo; information and consultancy related to all the aforementioned services"
Class 37 "Construction of
building services; installation, maintenance and repair services for doors; services of shipbuilding, maintenance, repair, destruction and recycling for sea and ocean going rigs, vessels, and platforms; inspection services in the course of ship building and ship building projects;
installation, maintenance and repair of fire-fighting and rescue and safety apparatus and systems, namely, fire alarm, detection, and suppression systems; installation,
maintenance and repair of refrigerating, heating, ventilating and air conditioning apparatus and systems; installation, maintenance and repair of thermal insulation; installation, maintenance and
repair of electrical installations and systems, namely, electro automation installations and systems; installation, maintenance and repair of gas distribution apparatus and
systems, installation, inspection, maintenance and repair of central welding and gas and inert gas installations; refilling of gas containers; cleaning and repair of boilers; painting services;
building, installation, maintenance and repair of construction machines; under water repair; rental of welding machines and equipment rental of gas
cylinders and containers; rental of air compressors; rental of construction machines and equipment for building, maintenance and repair purposes; rental of cleaning machines and
equipment; rental of waste treatment machines and equipment; information and consultancy related to all the aforementioned services"
Class 39 "Logistics, transport
and freight services, namely, freight transportation and consultation in the field of freight transportation by truck, rail, air, and ocean; parcel shipping
services; ship transportation brokerage, bunker transportation brokerage, transport brokerage; transport reservation; freight forwarding; freighting;
arranging and managing transportation of cargo and/or containers to and from ports on behalf of vessel owners, charterers or cargo owners; container handling; distribution services,
namely, delivery of goods; delivery of goods; warehousing; merchandise packaging for others and storage of goods; inspection of
vehicles, ships and/or goods before transport; carriage of goods or cargo for others by land, sea or air, cargo handling services; logistics services for vessel owners, charterers or
cargo owners, namely, storage, transportation, and delivery of goods for others by ship; provisioning of ships, namely rental of shipping vessels; crew and
passenger logistics, namely, arranging, coordinating and controlling stopovers, transfer and transit of passengers, aircraft crew and their luggage; packaging and packing of
goods for dispatch; cargo load handling; marine towing, unloading and loading, and operating harbours and docks; rental of means of transport,
including namely, boats and ships; rental of storage containers; rental of warehouse space; travel arrangement services, namely,
arranging travel tours; including agency for ship clearance with customs, harbour, immigration and health authorities; delivery and freight
brokerage of goods; arranging shore excursions; supervision of port and terminal operations, namely, ship and cargo unloading; port services, namely, unloading
cargo; energy distribution services; information and consultancy related to all the aforementioned services"
Class 41 "Education services, namely, providing of driver safety training; providing of training in the use and operation of safety equipment and installations; safety regulation training; information and consultancy related to all the aforementioned services"
Class 42 "Scientific and technological services and research, namely, design and analysis in the field of naval shipbuilding; services for water and oil well analysis, said analysis done in a laboratory and onboard a ship; industrial analysis and research services in the field of naval shipbuilding; design and development of computer hardware and software; information and consultancy related to all the aforementioned services"
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.
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.
/Marc J. Leipzig/
Law Office 115
Trademark Examining Attorney
Phone: (571) 272-2104
marc.leipzig2@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.