To: | Randall Industries, Inc. (MNelsonJD@yahoo.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85349420 - ULTRA COOL - DRC ULTRA CO |
Sent: | 10/11/2011 7:43:41 AM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85349420
MARK: ULTRA COOL
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Randall Industries, Inc.
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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: 10/11/2011
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(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES THAT APPLICANT MUST ADDRESS:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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 Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.
Comparison of the Marks
In the present case, applicant’s mark is ULTRA COOL and registrant’s mark is ULTRA COOL. Thus, the marks are identical in terms of appearance and sound. In addition, the meaning, connotation, and commercial impression of the marks do not differ when used in connection with the parties’ respective goods.
Thus, the marks are confusingly similar.
Comparison of the Goods
In this case, applicant seeks to register its mark for “Radiators for vehicles.” The registrant uses its mark for “Vehicle engine parts, namely, oil coolers.” Applicant’s and registrant’s goods are related in that they both consist of vehicle engine parts. As such, 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.
See U.S. Registration Nos. 2726723, 3054603, 3219924, 3388527, 3424140, 3486376, 3555071 and 3684936.
Since the marks are identical and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods. Accordingly, applicant’s mark is refused registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §1207.01 et seq. because applicant’s mark so resembles the mark in U.S. Registration No. 3984718 as to be likely to cause confusion when used on or in connection with the goods identified in the application.
Applicant should note the following additional ground for refusal.
REFUSAL – SPECIMEN DOES NOT SHOW USE OF MARK WITH SPECIFIED GOODS
In this case, the specimen is an image or rendering of the applied-for mark with no connection to any of the goods identified in the application. As such, the specimen does not show the applied-for mark in actual use in commerce on the goods.
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.
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).
Response Options
(1) Submit a verified substitute specimen as follows: (a) answer “yes” to the TEAS response form wizard question to “submit a new or substitute specimen;” (b) on the next page, attach a jpg or pdf file of the substitute specimen; (c) check the box next to the statement “The substitute (or new, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application”; and (d) on the next page, applicant must personally sign or personally enter his/her electronic signature and date after the declaration at the end of the TEAS response form.; or
(2) Amend the application to an intent to use filing basis under Trademark Act Section 1(b) as follows: (a) answer “yes” to the TEAS response form wizard questions to “change filing basis” and for a “signed declaration,” respectively; (b) on the next page, uncheck the box for “Filing Basis Section 1(a);” (c) check the box for “Filing Basis Section 1(b);” and (d) on the next page, applicant must personally sign or personally enter his/her electronic signature and date after the declaration at the end of the TEAS response form.
See 37 C.F.R. §§2.34(a)(2), 2.59(a), 2.193(a), (c)-(d), (e)(1); TMEP §§611.01(c), 804.01(b).
If applicant experiences difficulty in submitting the verified substitute specimen or in changing the filing basis, please e-mail TEAS@uspto.gov for technical assistance regarding the TEAS response form.
Applicant must respond to the requirement(s) set forth below.
DISCLAIMER REQUIRED
The applicant must insert a disclaimer of “COOL” in the application because this wording merely describes a feature and purpose of applicant’s goods. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).
The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof. 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. 15 U.S.C. §1052(e). Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). See TMEP §§1213, 1213.03.
Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark. TMEP §1213.01(b).
A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark. TMEP§1213. A disclaimer does not affect the appearance of the applied-for mark. See TMEP§1213.10.
Wording is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services. TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).
In this case, applicant’s mark is ULTRA COOL for “Radiators for vehicles.” The term “COOL” is defined as “[g]iving or suggesting relief from heat: a cool breeze; a cool blouse.” http://education.yahoo.com/reference/dictionary/entry/cool. Thus, the term “COOL” merely describes a feature and purpose of applicant’s goods, namely, that they COOL (i.e., provide relief from heat). This is supported by the definition of a “radiator,” namely, “[a] cooling device, as in automotive engines, through which water or other fluids circulate as a coolant.” http://education.yahoo.com/reference/dictionary/entry/radiator.
Applicant may submit the following standardized format for a disclaimer:
No claim is made to the exclusive right to use “COOL” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
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.
/Amy L. Kertgate/
Law Office 113
Trademark Examining Attorney
Office: 571-272-1943
Email: amy.kertgate@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.