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: 3/5/2012

 

 

 

This is responsive to applicant’s response of May 4, 2011.

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 3341565.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).

 

The following issues were raised in the first Office Action:  (1) likelihood of confusion with Registration No. 3341565  under Section 2(d); (2) caveat as to prior pending Application Serial No. 77619143; (3) improper classification of some of the goods covered by the application; (4) information regarding possible amendment to the identification of goods; and 5) information regarding multi-class requirements.

 

Applicant has addressed issues (1), (3), (4) and (5).  Issue (2) is now moot due to the abandonment of prior pending application Serial No. 77619143 and reference thereto is hereby withdrawn.

 

In addition, a new issue has arisen as a result of applicant’s response to issue (5).

 

 

Issue #1—Likelihood of Confusion with Registration No. 3341565

 

Applicant’s mark and that of registrant are identical.  Applicant seeks to register the mark EMAX for the following goods (as amended in this response):

 

Air compressors; air-powered power tools, namely, air-oil separator filters for air compressors and oxygen regulators; Air-operated power tools, namely, grinders, sanders, impact wrenches, spray guns for paint in International Class 7;

 

Air regulators, namely oxygen regulators in International Class 9;

 

Air powered dryers, namely, industrial dryers for heating and dehumidifying; refrigerated dryers, namely, industrial dryers for heating and dehumidifying; desiccant dryers in International Class 11.

 

The EMAX goods covered by Registration No. 3341565 are pressure relief valves for compressors.

 

The Examiner submitted evidence in the nature of third-party registration of marks used in connection with the same or similar goods as those of applicant and registrant in this case which have probative value to the extent that they serve to suggest that the goods and/or services listed therein are of a kind that may emanate from a single source.

 

Applicant has argued that there is no likelihood of consumer confusion because

1. registrant’s valves appear different in nature from those of applicant;
2. EMAX is  a weak mark and therefore is less likely to make an impression upon customers and therefore customers are less likely to associate the mark EMAX with a single source and therefore are less likely to be confused.

 

 

Response to Argument 1: 

 

 

Applicant argues that registrant’s valves appear different in nature from those of applicant because an attached print ad from the Pipeline & Gas Journal of September 2009 shows that registrant’s valves are allegedly used strictly in the natural gas industry to facilitate the delivery of the natural gas through pipelines as does the page from registrant’s website at www.ceconet. 

 

Applicant reasons that since its valves are not used with gas compressors or in the natural gas industry at all, use of the identical mark on the respective valves is not likely to cause consumer confusion.

 

Contrary to applicant’s assertion, the print ad in Pipeline & Gas Journal does not prove that registrant’s valves are used strictly in the natural gas industry.  The only reference at all to “gas” in the ad is the statement that the valve increases compressor efficiency for maximum gas throughout.  There is no reference to the natural gas industry or a restriction as to the use of the valves for gas compressors only.  Indeed, registrant’s own website seems to indicate otherwise since it specifically states that “…CECO custom manufactures and stocks a complete line of valves for any job…”.

 

In addition, registrant’s EMAX mark is registered for pressure relief valves for compressors.  The nature of the compressors is not limited to “gas compressors”.

 

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.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); see Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638-39 (TTAB 2009); TMEP §1207.01(a)(iii). 

 

In this case, the identification set forth in the cited registration uses broad wording to describe registrant’s goods and/or services and does not contain any limitations as to nature, type, channels of trade or classes of purchasers.  Therefore, it is presumed that the registration encompasses all goods and/or services of the type described, including those in applicant’s more specific identification, that the goods and/or services move in all normal channels of trade, and that they are available to all potential customers.  See Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); TMEP §1207.01(a)(iii).

 

As such it is presumed that registrant’s pressure relief valves for compressors encompass use in connection with applicant’s air compressors as well.

 

 

Response to Argument #2

 

 

Applicant argues that EMAX is a weak mark and therefore is less likely to make an impression upon customers and therefore customers are less likely associate EMAX with a single source and therefore, they are less likely to be confused.

 

Even if one were to concede that EMAX is a weak mark, The Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that marks deemed “weak” or merely descriptive are still entitled to protection against the registration by a subsequent user of a similar mark for closely related goods and/or services.  In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982); TMEP §1207.01(b)(ix); see King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401, 182 USPQ 108, 109 (C.C.P.A. 1974).  This protection extends to marks registered on the Supplemental Register.  TMEP §1207.01(b)(ix); see, e.g., In re Clorox Co., 578 F.2d 305, 307-08, 198 USPQ 337, 340 (C.C.P.A. 1978); In re Hunke & Jochheim, 185 USPQ 188 (TTAB 1975).

 

 

 

Applicant is advised that the refusal to register is limited to International Class 7 as amended only and does not extend to Classes 9 and 11 as amended.

 

 

 

Issue No. 2—Reference to prior pending application is withdrawn

 

Issue Nos. 3 & 4—Classification of goods/services

 

Applicant has responded to the Examiner’s suggestions for the amendment to the identification of goods and has clarified the nature of the goods covered in the application.  The clarification of the goods as well as the adoption of some of the suggested identifications by applicant  has resulted in an acceptable identification for the goods in Class 7 as well as acceptable identifications for goods in Classes 9 and 12. 

 

Issue # 5—Requirement for Multi-Class Applications

 

Applicant was advised of the requirements for multi-class applications as well as advised that the specimen of record which was submitted in acceptable for Class 7 only.

 

Applicant has successfully complied with all of the requirements for a multiple-class application, except for the acceptability of the specimen submitted for Class 9.

 

NEW SPECIMEN REQUIRED FOR CLASS 9

 

The specimen is not acceptable because it does not show the applied-for mark used in connection with any of the goods and/or services specified in the application.  An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services.  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). 

 

In this case, the specimen consists of a photograph of the Class 9 goods, namely an oxygen regulator.  However, the mark EMAX is not shown in the photograph.. 

 

Therefore, applicant must submit the following:

 

(1)  A substitute specimen showing the mark in use in commerce for each class of goods and/or services 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.  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.

 

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 and/or services 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 and/or service mark for the identified goods and/or services.  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).

 

 

Since applicant was advised in the first Office Action that the specimen submitted with the application was acceptable for Class 7 only, the requirement for submission of an acceptable specimen for Class 9 is hereby made FINAL.

 

 

 

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

 

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

If applicant does not respond within six months of the date of issuance of this final Office action, the following classes to which the final refusal(s) and/or requirement(s) apply will be deleted from the application by Examiner’s Amendment:  International Class 7 and International Class 9. 

 

The application will then proceed for the following classes:  International Class 11.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

Applicant may respond to this final Office action by:

 

(1)  Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)  Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions.  See 37 C.F.R. §2.23(a)(1).  For a complete list of these documents, see TMEP §819.02(b).  In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address.  37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a).  TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services.  37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04.  In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.

 

 

 

 

/Lucy Arant/

Trademark Examining Attorney

Trademark Law Office 111

Telephone:  (571) 272-3542

Email:  lucy.arant@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 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 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 3/5/2012 FOR

SERIAL NO. 85220689

 

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 3/5/2012 (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.