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: 1/26/2011

 

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, 2.65(a); TMEP §§711, 718.03.

 

SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3509803 and 3659092.  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 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

 

The applicant seeks to register the mark VETRPRO and design.  The registered marks are as follows:

 

U.S. Registration No. 3509803 – VETPROFEN

 

The marks are similar in that they share the wording VETPRO.  The addition of the wording FEN to the registered mark does not obviate the likelihood of confusion because consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).

 

U.S. Registration No 3659092 – VETPRO

 

The marks are identical.  As such, they convey identical commercial impressions.

 

The addition of the design element to the applied-for mark does not obviate the likelihood of confusion because, when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods and/or services.  Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729, 735 (TTAB 1976); TMEP §1207.01(c)(ii).

 

Comparison of Goods

 

The applicant seeks to register its mark for “Veterinary pharmaceutical compounds, preparations, and products for farm animal and family pet use to treat conditions of the eye, leg, hoof, ear, nose, throat, and skin, and other parts of farm animals or family pets which may be affected by disease or irritation.”  The registered marks are used as follows:

 

U.S. Registration No. 3509803 – for ANTI-INFLAMMATORY DRUG FOR VETERINARY USE

 

U.S. Registration No 3659092 – for “Veterinary dental system combining dental handpieces, a compressor, hoses, instrument docking tray, and an air/water syringe”

 

Applicant’s goods are identified broadly.  As such, they include all types of veterinary pharmaceutical preparations, may be used on any part of pets or farm animals to treat any disease.  Because applicant’s goods are identified broadly, they encompass anti-inflammatory drugs.  As such, the goods are potentially identical to the goods listed in U.S. Registration No. 3509803.  Similarly, applicant’s goods include all products that may be used on any part of pets or farm animals to treat any disease or irritation. Thus, applicant’s goods encompass products in the nature of dental systems.  Therefore, applicant’s goods are also potentially identical to the goods listed in U.S. Registration No 3659092.

 

Because the goods are potentially identical, they are likely to be encountered by the same class of potential consumers.  Consumers who encounter identical or similar marks for identical, similar or related goods are likely to be confused as to their source.  Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.

 

Although the examining attorney has refused registration, the applicant may present arguments in support of registration.  In addition, the applicant must also respond to the following requirement:

 

IDENTIFICATION OF GOODS

 

The identification of goods must be clarified because the identification of goods is overly broad and indefinite and does not specifically indicate the types of goods.  Moreover, while the wording “compounds” and “preparations” may be acceptable if the compounds and preparations are identified more specifically, the wording “products” is not acceptable in relation to pharmaceuticals unless the products themselves are identified.   Therefore, applicant must clarify the goods by indicating the types of goods (e.g., anti-inflammatories, analgesics), by indicating the type of disease or irritation or by specifying the parts identified in “and other parts.”  See TMEP §1402.01.

 

Applicant may adopt the following identification of goods, if accurate: 

 

Veterinary pharmaceutical compounds, preparations, and products for farm animal and family pet use to treat conditions of the eye, leg, hoof, ear, nose, throat, and skin, and other parts of farm animals or family pets which may be affected by disease or irritation, namely, [specify, e.g., anti-inflammatories, analgesics, topical first aid gel, topical anesthetics], in International Class 5.

 

See TMEP §1402.01.

 

Identifications of goods can be amended 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.  Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.

 

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.

 

 

 

 

 

 

 

/Melissa Vallillo/

Examining Attorney

Law Office 113

Phone: (571) 272-5891

Fax: (571) 273-9113

 

 

 

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 1/26/2011 FOR

SERIAL NO. 85152865

 

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 1/26/2011 (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.