To: | Schoop + Co. AG (dwa@amburnlaw.com) |
Subject: | U.S. Trademark Application Serial No. 79275865 - REDLINE - 6114 |
Sent: | October 15, 2020 12:42:25 PM |
Sent As: | ecom108@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 79275865
Mark: REDLINE
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Correspondence Address:
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Applicant: Schoop + Co. AG
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Reference/Docket No. 6114
Correspondence Email Address: |
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FINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: October 15, 2020
International Registration No. 1507676
This Office action is in response to applicant’s communication filed on August 8, 2020.
In a previous Office action(s) dated March 3, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirement(s): amend the identification of goods and clarify the mark description.
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: clarified mark description and definite amended identification provided. See TMEP §§713.02, 714.04.
The trademark examining attorney maintains and now makes FINAL the refusal(s) below. See 37 C.F.R. §2.63(b); TMEP §714.04.
Likelihood of Confusion
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
In this case, applicant’s mark is REDLINE stylized and design. Registrant’s mark is REDLINE. As previously noted, the literal elements of the marks are identical.
Applicant’s goods are “[b]uilding materials not of metal for bridging gaps in buildings, bridges, superstructures, and roads, namely, expansion joints; non-metallic building materials, namely, expansion joints made of asphalt, pitch and bitumen for bridging gaps in buildings, bridges, superstructures, and roads; roof-covering materials not of metal; non-metallic building materials, namely, Containment systems for large scale liquid spills or releases, namely, berms made of cement or artificial stone.”
Registrant’s goods are “rubberized construction materials for waterproofing expansion joints in the nature of a continuous rubber roll with polyester fleece embedded on both edges.”
Applicant’s goods include expansion joints. Registrant’s goods are used for waterproofing expansion joints. Consequently, the goods are complimentary goods, which are often used together or otherwise purchased by the same purchasers for the same or related purposes. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because they are often used in combination and noting that “[s]uch complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion”); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel on the same patients to treat the same disease).
Applicant argues that the owner of U.S. Registration No(s). 2382929 is a distributor of applicant’s, from whom the applicant is attempting to secure an assignment of ownership; however, as this assignment has not yet been made of record or recorded, it cannot be considered at this time.
Given the similarity of the marks and the closely related nature of the goods, consumers are likely to be confused as to the source of the goods. Consequently, the refusal under Section 2(e)(1) is maintained and made FINAL.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/alrademacher/
April L. Rademacher
Examining Attorney
USPTO
Law Office 108
571-270-3353
april.rademacher@uspto.gov
RESPONSE GUIDANCE