UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 11/19/2010

 

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.

 

Summary of issues that applicant must address

 

Ø      Section 2(d) Refusal-Likelihood of Confusion

Ø      Information Requests

Ø      Explanation of Mark’s Significance Required

Ø      Identification of Goods

 

Applicant should note the following ground for refusal.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2164512.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

The applicant has applied to register “KHK” for “standardized metric gears, namely, spur gears, helical gears, racks and pinions, bevel gears, miter gears, worm gears, internal gears, and screw gears; custon gears.”  The registered mark is “KHK” for “diamond saw blades, for power saws, for use cutting granite, marble, stone, concrete, brick and block, tiles, asphalt masonry etc.; diamond grinding wheel for grinding granite, marble, stone, concrete etc.; diamond core bit and drill for drilling holes on the wall and or any other non metal material.”

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or 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).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 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 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 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 present case, applicant’s mark “KHK” is identical to registrant’s mark “KHK.” Accordingly, the marks create the same commercial impression thereby satisfying the first prong of the likelihood of confusion test.

 

Comparison of Goods

 

Applicant should note that where the marks of the respective parties are identical or virtually identical, there need be only a viable relationship between the relevant goods to support a finding of likelihood of confusion.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009); In re Wilson, 57 USPQ2d 1863, 1867 (TTAB 2001); see also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).  In the present case, the parties’ marks are identical.  Accordingly, the relationship between the parties’ goods to support a finding of likelihood of confusion is not as great. 

 

In a likelihood of confusion analysis, the comparison of the parties’ goods and/or services is based on the goods and/or services as they are identified in the application and registration, without limitations or restrictions that are not reflected therein.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); see TMEP §1207.01(a)(iii). 

 

Moreover, the goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, it is sufficient that the goods and/or services are related in some manner and/or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

 

Here, applicant seeks registration for “standardized metric gears, namely, spur gears, helical gears, racks and pinions, bevel gears, miter gears, worm gears, internal gears, and screw gears; custon gears.”  Registrant has protection for “diamond saw blades, for power saws, for use cutting granite, marble, stone, concrete, brick and block, tiles, asphalt masonry etc.; diamond grinding wheel for grinding granite, marble, stone, concrete etc.; diamond core bit and drill for drilling holes on the wall and or any other non metal material.”  The parties’ goods are the type that would emanate from a single source because the goods are the type sold to consumers seeking machine parts.  Accordingly, the goods would be sold to the same class of purchasers and encountered under circumstances leading one to mistakenly believe the goods originate from the same source. 

 

Moreover, in this case, applicant’s goods are identified broadly.  Therefore, it is presumed that applicant’s goods are used for a variety of purposes including the goods specified in registrant’s identification of goods.  See In re La Peregrina Ltd., 86 USPQ2d 1645, 1646 (TTAB 2008); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); TMEP §1207.01(a)(iii).  More specifically, it is conceivable that applicant’s goods are used in connection with similar goods as registrant’s, namely, power saws and drilling tools.  For this reason, the parties’ goods are related.

 

To further demonstrate that the goods of the parties travel in the same commercial channels of trade, the examining attorney has attached a sampling of a search conducted on the Internet.  This evidence conclusively demonstrates that the goods of the parties are marketed and sold through the same channels of trade.  See the attached web pages from: http://www.8wormgear.com/; http://www.gearshub.com/gear-grinding.html; http://www.geartechnology.com/news.php?in=558; http://www.tradett.com/rock-drilling-tools-products/ and http://www.pragatigears.com/F19400/power_tool_gears.html.  More specifically, see the attached printout from http://www.pragatigears.com/F19400/power_tool_gears.html with the following relevant excerpt:  “Gears for different types of power tools such as Marble Cutter, Drills, Impact Drills, Hammer Drills, Rotary Hammers, Circular Saw, Chop Saw etc.
Gears suitable for Hitachi, Black & Decker, Electrex, KPT , Bosch.”  The attached internet evidence indicates that applicant’s goods may used in connection with the same goods as registrant’s goods.  Accordingly, the parties’ goods are related. 

 

Since the marks create the same overall commercial impressions and the goods are related, there is a likelihood of confusion as to the source of the applicant’s goods.  Therefore, registration is refused under Section 2(d) of the Trademark Act.

 

APPLICANT HAS RIGHT TO RESPOND

 

Although applicant’s mark has been refused registration under Section 2(d) of the Trademark Act, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  

 

If the applicant chooses to respond to the Section 2(d) refusal, the applicant must also address the requirements set forth below.

 

Information requests

 

To permit proper examination of the application, applicant must submit additional product information about the goods.  See 37 C.F.R. §2.61(b); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701-02 (TTAB 2003); TMEP §814.  The requested product information should include fact sheets, instruction manuals, and/or advertisements.  If these materials are unavailable, applicant should submit similar documentation for goods of the same type, explaining how its own product will differ.  If the goods feature new technology and no competing goods are available, applicant must provide a detailed description of the goods.

 

The submitted factual information must make clear how the goods operate, their salient features, and their prospective customers and channels of trade.  Conclusory statements regarding the goods will not satisfy this requirement.

 

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, 67 USPQ2d at 1701-02.  Merely stating that information about the goods is available on applicant’s website is an inappropriate response to a request for additional information and is insufficient to make the relevant information of record.  See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).

 

EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED

 

Applicant must explain whether “KHK” has any meaning or significance in the industry in which the goods are manufactured/provided, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.

 

Further, applicant must provide additional information about this wording to enable proper examination of the application.  Specifically, applicant must respond to the following questions: 

 

1)      Is the lettering “KHK” short for anything?

2)      If the answer to number one is yes, what does the lettering stand for?

 

Failure to respond to this request for information can be grounds for refusing registration.  See In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

CLASSIFICATION AND Identification of goods

 

Applicant’s Class 7 identification of goods is as follows:

 

standardized metric gears, namely, spur gears, helical gears, racks and pinions, bevel gears, miter gears, worm gears, internal gears, and screw gears; custon gears.

 

The identification of goods is indefinite and must be clarified because it is vague and does not clearly identify the goods.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. 

 

More specifically, applicant should further specify the exact use or type of its gears.  For instance, if the standardized metric gears are in the nature of transmission gears for machines, gear motors not for land vehicles or gear drives, applicant may indicate accordingly. 

 

Alternatively, if the goods are in the nature of gears for vehicles, applicant may indicate accordingly.  However, applicant should note that gears for vehicles are goods that are correctly classified in International Class 12.  Therefore, if applicant retains these goods in the application, then applicant must comply with the multiple-class requirements stated elsewhere in this Office action.  See 37 C.F.R. §2.86; TMEP §§1403 et seq. 

 

Furthermore, applicant should further specify the nature or type of goods with respect to the wording “racks and pinions” and “custon gears”  Generally, a trademark examining attorney will recommend acceptable substitute wording for unacceptable identifications of goods.  In this case, however, because the nature of the goods is unclear from the application record, the trademark examining attorney is unable to suggest any alternative wording.  See TMEP §1402.01(e).

 

Applicant may adopt the following identification, if accurate: 

 

Class 7: standardized metric {further specify the type of gears, for example, transmission gears for machines, gear motors not for land vehicles or gear drives}, namely, spur gears, helical gears, {further specify the type of goods racks and pinions}, bevel gears, miter gears, worm gears, internal gears, and screw gears; {further specify the type of goods custon} gears;

 

Class 12: standardized metric {further specify the type of gears, for example, gears for vehicles}, namely, spur gears, helical gears, racks and pinions, bevel gears, miter gears, worm gears, internal gears, and screw gears.

 

An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq. 

 

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.

 

MULTIPLE – CLASS APPLICATION REQUIREMENTS-ADVISORY

 

The application identifies goods that are classified in at least two classes; however, the fees submitted are sufficient for only one class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all of the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)        LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class; and

 

(2)        PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

Response guidelines

 

For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  Applicant may also have other options for responding to a refusal and should consider such options carefully.  To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements. 

 

If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.  Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status.  See 37 C.F.R. §2.66; TMEP §1714.  There is a $100 fee for such petitions.  See 37 C.F.R. §§2.6, 2.66(b)(1).

 

If applicant has questions about the application or this Office action, please telephone the assigned trademark examining attorney at the telephone number below.

 

 

/Ameen Imam/

Trademark Examining Attorney

Law Office 113

Phone (571) 272-1942

 

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

 

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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.

 

 

 

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION HAS ISSUED ON 11/19/2010 FOR

SERIAL NO. 85096099

 

Please follow the instructions below to continue the prosecution of your application:

 

 

TO READ OFFICE ACTION: Click on this link or go to http://portal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

RESPONSE IS REQUIRED: You should carefully review the Office action to determine (1) how to respond; and (2) the applicable response time period. Your response deadline will be calculated from 11/19/2010 (or sooner if specified in the office action).

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System Response Form.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

 

Failure to file the required response by the applicable deadline will result in the ABANDONMENT of your application.