To: | DYK Automotive, LLC (Michael.Hoelter@Bellsouth.net) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85002226 - PRO-1 - N/A |
Sent: | 5/25/2010 7:45:23 AM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 85002226
MARK: PRO-1
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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: DYK Automotive, LLC
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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.
ISSUE/MAILING DATE: 5/25/2010
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.
1. Likelihood-of-confusion refusal.
a. Comparison of marks.
In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
In the instant case, the applicant’s mark PRO-1 is nearly identical to the registered mark PRO 1 because they share a common appearance, sound, connotation, and overall commercial impression. The only difference in the marks (a hyphen, which is not discernable from pronunciation) does not alter the commercial impression of the marks.
b. Comparison of goods/services.
In the instant case, the applicant’s goods/services (“automotive hoses and belts,” which may concern the engine; see Part 2 below) are closely related to the registrant’s goods/services (“engine parts, namely, cylinder heads for high performance motor vehicles”) because both are different types of automotive parts and accessories likely to travel through the same channels of trade to the same classes of purchasers.
Accordingly, because confusion as to source is likely in the instant case, registration is refused under Trademark Act §2(d). Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If the applicant responds to the above refusal to register, the applicant must also respond to the following.
2. Identification of goods/services.
An application’s identification of goods/services must be specific, definite, clear, accurate and concise. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953); TMEP §1402.01.
In the instant case, the identification of goods/services is unacceptable as containing indefinite and overbroad wording. Specifically, the applicant must indicate the exact nature of its “hoses and belts”—which also determines proper classification. Accordingly, the applicant must clarify along the lines indicated below. The applicant may adopt the following identification (to the extent accurate):
Class 12—automotive [specify, e.g., air-brake]hoses and [specify, e.g., drive or seat or transmission]belts
Class 17—automotive [specify, e.g., radiator-connecting]hoses
Class 7—automotive [specify, e.g., engine timing or engine fan]belts
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
3. Fee and evidence of use.
If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the requirements below for those goods and/or services based on actual use in commerce under Trademark Act Section 1(a):
(1) Applicant must list the goods/services by international class;
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov); and
(3) For each additional international class of goods and/or services, applicant must submit:
(a) Dates of first use of the mark anywhere and dates of first use of the mark in commerce, or a statement that the dates of use in the initial application apply to that class. The dates of use, both anywhere and in commerce, must be at least as early as the filing date of the application.;
(b) One specimen showing the mark in use in commerce for each class of goods and/or services. The specimen must have been in use in commerce at least as early as the filing date of the application. If a single specimen supports multiple classes, applicant should indicate which classes the specimen supports rather than providing multiple copies of the same specimen. Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP §§1301.04 et seq.;
(c) The following statement: “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.”; and
(d) Verification of the statements in 3(a) and 3(c) (above) in an affidavit or signed declaration under 37 C.F.R. §2.20. Verification is not required where (1) the dates of use for the added class are stated to be the same as the dates of use specified in the initial application, and (2) the original specimens are acceptable for the added class(es).
See 15 U.S.C. §§1051(a), 1112, 1127; 37 C.F.R. §§2.32(a)(5), 2.34(a)(1), 2.56(a), 2.71(c), 2.86(a), 2.193(e)(1); TMEP §§1403.01, 1403.02(c).
With respect to the requirement in 3(b) above for a specimen for each class of goods and/or services, please note that the specimen(s) of record is acceptable for no International Class(es); see Part 4. Applicant must submit additional specimens if other classes are added to the application.
4. Specimen.
An application based on Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Therefore, applicant must submit the following:
(1) A substitute specimen showing the mark in use in commerce for each class of goods specified in the application; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq.
If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).
Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
• Use of ®.
TMEP §906.03 provides
If a specimen in an application shows a federal registration symbol used with the mark that is the subject of the application, or with any portion of this mark, the examining attorney should determine from the Office records whether or not such matter is registered. If it is not, and if the symbol does not appear to indicate registration in a foreign country [viz., Belgium, China (People’s Republic), Costa Rica, Denmark, Ecuador, Germany, Guatemala, Hungary, Luxembourg, Netherlands, Nicaragua, Poland, Sweden], the examining attorney should point out to the applicant that the records of the Office do not show that the mark with which the symbol is used on the specimens is registered and that the registration symbol may not be used until a mark is registered in the Office. The examining attorney should not require any explanation or comment from the applicant concerning the use of the symbol in relation to the mark.
The applicant is so advised.
• Responding to this Office Action.
The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html. 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/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov and/or call the Trademark Assistance Center at 1-800-786-9199.
Unless applicant filed its application with TEAS-Plus status and wishes to avoid incurring a $50-per-class fee (in which case, see immediately preceding paragraph), there is no required format or form for responding to an Office action; however, applicant must explicitly address each refusal and/or requirement raised in this Office action. If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.
The response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). See 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §§611.03(b), 611.06 et seq., 712.01. In the case of joint applicants, all must sign. 37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a). In addition, the proper signatory must personally sign or personally enter his/her electronic signature. See 37 C.F.R. §2.193(a), (e)(2)(ii); TMEP §§611.01(b), 611.02.
If applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).
/J. Brendan Regan/
Examining Attorney
U.S. Patent and Trademark Office
Law Office 113
brendan.regan@uspto.gov
571/272.9212
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.
APPENDIX TO OFFICE ACTION
Mark
PRO 1
Goods and Services
IC 007. US 013 019 021 023 031 034 035. G & S: Engine parts, namely, cylinder heads for high performance motor vehicles. FIRST USE: 19980101. FIRST
USE IN COMMERCE: 19980101
Mark Drawing Code
(1) TYPED DRAWING
Serial Number
75514595
Filing Date
July 7, 1998
Current Filing Basis
1A
Original Filing Basis
1B
Publication for Opposition Date
June 22, 1999
Registration Number
2379957
Registration Date
August 22, 2000
Owner Name and Address
(REGISTRANT) DART MACHINERY, LTD. CORPORATION MICHIGAN 353 Oliver Street Troy MICHIGAN 48084
Type of Mark
TRADEMARK
Register
PRINCIPAL
Affidavit Text
SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20100309.
Renewal
1ST RENEWAL 20100309
Live Dead Indicator
LIVE
Attorney of Record
R. Scott Keller