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: 5/17/2012

This letter responds to Applicant’s communication filed April 18, 2012.

The proposed identification of goods for international classes 5, 6, 8, 10, 12, 17, 19, 21 and 22 and deletion of international classes 4 and 7 have been accepted and entered.

In addition, the refusal to register international classes 10 and 21 under Trademark Act Section 2(d) is withdrawn.

However, the requirement for a definite identification of goods for international classes 1, 9, 11, 16, and 20 and the refusal to register international class 1 under Trademark Act Section 2(d) with regard to U.S. Registration No. 2772617 are continued and maintained.

In addition, the following refusal must be issued based on Applicant’s proposed amended identification of goods.

SECTION 2(D) REFUSAL – LIKELIHOOD OF CONFUSION – INTERNATIONAL CLASSES 11 AND 17 – SPECIFIC GOODS

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2772617.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

Applicant applied to register the mark LSS for “emergency mercury cleanup kits comprising safety glasses, disposable gloves, disposable bag, mercury absorb sponges and mercury absorb powder” in international class 11 and “absorbent products, namely, perforated pads, for the containment and clean-up of oil based chemicals, oils and liquids” and “oil absorbent pads and pillows for containing oil spills” in international class 17.  The registered mark is FLUIDRAIN LSS for chemicals for solidifying fluid waste to aid in the disposal of fluid waste.

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 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 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.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); 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 similarity of trade channels of the goods.  See In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.

COMPARISON OF THE 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)-(b)(v).  Similarity in any one of these elements may be sufficient to find the marks confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).

In the present case, the respective marks are comprised in whole or significant part of the letters LSS.  Such a combination of letters is arbitrary and distinctive as used in connection with the identified goods.  Consequently, the marks share the same over-all sound, appearance and commercial impression.  Applicant has simply deleted the descriptive term Fluid Drain from Registrant’s mark.  The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.

COMPARISON OF THE GOODS

The goods 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 to show that because of the conditions surrounding their marketing, or because they are otherwise related in some manner, the goods would be encountered by the same consumers under circumstances such that offering the goods under confusingly similar marks would lead to the mistaken belief that they come from, or are in some way associated with, the same source.  In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984); TMEP §1207.01(a)(i).

Here, the goods identified in the registration are closely related to the goods identified by the applicant.  Registrant’s chemicals are used for solidifying fluids.  This solidification function is a form of absorption/adsorption performed by sorbents.  See attached excerpted webpages defining sorbents and explaining what solidification is.  Both Registrant’s chemicals for solidification of liquid waste and Applicant’s mercury clean up kits and absorbent pads and pillows may be used in overlapping applications and/or compliment each other in remediation and clean-up.  It is quite common for the same manufacturers and suppliers to offer both Applicant’s and Registrant’s goods to the same end-consumers and cleaning services.  See attached excerpted webpages showing manufacturers and suppliers offering both the underlying chemicals and products such as Applicant’s pads and pillow for use in cleaning up, containing and solidification of liquids, hazardous wastes and the like; attached excerpted webpages showing service providers cleaning up a variety of hazardous and non hazardous liquids under their umbrella of clean-up services.  Thus, the examining attorney must conclude that it is highly foreseeable that customers of Registrant might encounter Applicant’s mark and goods in the marketplace given the similar channels of trade within which the identified goods travel.  Therefore, confusion as to source of origin or sponsorship is likely to occur.

The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988); Burroughs Wellcome Co. v. Warner-Lambert Co., 203 USPQ 191 (TTAB 1979).

SECTION 2(D) REFUSAL - LIKELIHOOD OF CONFUSION - INTERNATIONAL CLASS 1 – CONTINUED AND MAINTAINED – SPECIFIC GOODS

The refusal of registration under Trademark Act Section 2(d) with regard to U.S. Registration No. 2772617 is continued and maintained.  Specifically, the following goods in Applicant’s international class 1 are subject to the refusal:

chemicals in the form of liquid, powder and encapsulating pads used to neutralize lab and industrial spills

chemical compositions in gel form for absorbing spills

chemical preparation powders for detecting mercury for laboratory, research and industrial use

preparations and products used in industry to clean up acids, bases, solvents, lubricants, aggressive liquids, oils, coolants, water-base chemicals, and petroleum-based products sold in combination with a portable carrying cart

specially treated activated carbon cartridges that adsorb flammable, combustible and noxious vapors for use inside flammable liquid and acid/corrosive storage cabinets

The marks are similar in that they share the dominant arbitrary letter combination LSS.

In addition, the goods are very similar in that they are frequently offered by the same manufacturers and suppliers available to the same end-consumers for overlapping applications and/or compliment one another.  See attached excerpted webpages showing Registrant’s chemicals for solidification offered by the same manufacturers and suppliers, available to the same end-consumers and providers of clean-up/remediation type services.

IDENTIFICATION OF GOODS – INTERNATIONAL CLASSES 1, 9, 11, 16, AND 20 – CONTINUED AND MAINTAINED

The proposed identification of goods remains unacceptable because it is indefinite.  See TMEP §1402.01.

In particular, for international class 1, Applicant must indicate the type of “gas” used in the calibration and provide greater specificity as to the type of “preparations and products” in the phrase, “preparations and products used in industry to clean up acids, bases, solvents, lubricants, aggressive liquids, oils, coolants, water-base chemicals, and petroleum-based products sold in combination with a portable carrying cart.”  Please note that the clarification must remains within the scope of the original identification, namely, “portable carts containing products used to clean up acids, bases, solvents, lubricants, aggressive liquids, oils, coolants, water-base chemicals, and petroleum-based products.”

For international class 9, Applicant must provide greater specificity with regard to “warming blankets for accident victims.”  These items must indicate how they are warmed and the field of use, which may implicate either international class 10 or 11.  In addition, Applicant must delete the repetitive phrases, “disposable latex gloves for laboratory use” and “protective gloves for industrial use.”

For international class 11, Applicant must provide greater specificity with regard to “lightsticks” and correct the punctuation to clarify all the components are sold as a kit.  In addition, the identification, “emergency mercury cleanup kits comprising safety glasses, disposable gloves, disposable bag, mercury absorb sponges and mercury absorb powder” appears to be incorrectly classified.  The kits are classified according to the principal components which should be identified first.  In this case, because of the toxicity and hazardous nature of mercury, it appears the most important aspect of these kits are the mercury absorption products followed by the items used in connection therewith.  If this is the case, then greater specificity is required as to the nature of the goods that absorb mercury and the kits should be reclassified to class 1.

For international class 16, Applicant must provide much greater specificity with regard to the label accessories.  What in fact are “label accessories”?  What are “wallet cards”?  Are “wallet cards” really a “label accessory”?

For international class 20, Applicant must provide greater specificity with regard to the “boxes” in the phrase, “non-metal lockout stations, namely, non-metal cabinets and boxes sold together with products used for lockout and tagout purposes”, “tags” in the phrase, “pre-printed plastic and vinyl labels and tags”, “jars” in the phrase, “packing containers and jars made of polypropylene material.”

For Applicant’s convenience, all indefinite terms and phrases, including suggestions by the examining attorney, have been highlighted.

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.

Applicant may adopt the following identifications, if accurate:

International class 1 –

Anti-slip chemical preparations that are applied to horizontal surfaces to prevent slip and fall accidents; [specify type, e.g. helium] gas used in the calibration of apparatus and instruments in medical, scientific and industrial applications; chemicals in the form of liquid, powder and encapsulating pads used to neutralize lab and industrial spills; chemicals, namely buffer solutions; epoxy putty for general bonding and repair purposes; chemical compositions in gel form for absorbing spills; chemical preparation powders for detecting mercury for laboratory, research and industrial use; pH value measurement indicators made of paper; chemical preparations used in industry to clean up acids, bases, solvents, lubricants, aggressive liquids, oils, coolants, water-base chemicals, and petroleum-based products sold in combination with a portable carrying cart; and specially treated activated carbon cartridges that adsorb flammable, combustible and noxious vapors for use inside flammable liquid and acid/corrosive storage cabinets; emergency mercury cleanup kits comprising sponges impregnated with chemical preparations to absorb mercury, chemical preparations in the nature of a powder for absorbing mercury, safety glasses, disposable gloves and disposable bags, all sold as a unit.

And

International class 9 –

disposable latex gloves for laboratory use; protective gloves for industrial use; electrical wires; electrodes; electronic pH testing meters; emergency fire protection blankets; face-protection shields; fire blankets; illuminated exit signs; luminous signs; laboratory apparatus, namely, centrifuge tubes; laboratory consumables, namely, pipette tips; laboratory equipment and supplies, namely, laboratory bottles; laboratory equipment and supplies, namely, test tubes; laboratory equipment and supplies, namely, thermometers; electronic control systems for machines; wireless controller to monitor and control the functioning of other electronic devices; laboratory storage tubes; lockout devices for use with electrical switches; luminous road signs; petri dishes used in laboratory research; plastic laboratory bottles and jars; plastic laboratory cylinders; plastic laboratory storage tubes; protective clothing especially made for use in laboratories; protective clothing, namely disposable garments for protection against accidents or injury in industrial, manufacturing and laboratory environments; rubber-coated cloth aprons for use in laboratories; safety eyeglasses and goggles; and training videos in the field of equipment and supplies for personal, environmental, and laboratory safety; emergency eye wash stations; laboratory equipment in the nature of apparatus for washing eyes; disposable plastic gloves for laboratory use;

And

International class 10 –

nitrile gloves for medical use; Electric warming blankets for use on accident victims for medical purposes; chemically activated warming blankets for use on accident victims for medical purposes.

And

International class 11 –

lanterns for lighting; emergency lighting kits comprising folding fluorescent lanterns, rubber flashlights, chemically-activated light sticks and lightstick holders, all within a metal case.

And

International class 16 –

Adhesive labels; adhesive-backed letters and numbers for use in making signs; cardboard boxes for the disposal of labware; disposable wipes not impregnated with chemicals or compounds; label accessories, namely, blank paper adhesive labels for use on business cards; paper banners; placards of paper or cardboard; pre-printed paper labels and tags; printed paper signs; training booklets in the field of equipment and supplies for personal, environmental, and laboratory safety; training charts and posters in the field of equipment and supplies for personal, environmental, and laboratory safety; and training/reference materials namely charts, posters, pocket guides, in the field of equipment and supplies for personal, environmental, and laboratory safety.

And

International class 20 –

Acid safety cabinets; eyewear storage racks; metal storage cabinets; non-metal containers for use as a secondary containment unit for leaks and spills and accessories therefore, namely ramp, tarp and horizontal rack, sold as a unit for commercial industrial and institutional use; non-metal lockout stations, namely, non-metal cabinets and lock boxes sold together with products used for lockout and tagout purposes; plastic and vinyl banners; and polylaminated acid storage cabinets; pre-printed plastic and vinyl labels and hang tags; packing containers and jars for commercial packaging made of polypropylene material.

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

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 the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

/V.J./

Gene V.J. Maciol, II

Trademark Attorney Advisor

Law Office 103

gene.maciol@uspto.gov

571 272 9280

571 273 9280 fax

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 5/17/2012 FOR

SERIAL NO. 85357348

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 5/17/2012 (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.