To: | T.E.S.S., LLC (tmdocketing@honigman.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85400936 - TESS - 218537 |
Sent: | 12/10/2011 1:19:56 PM |
Sent As: | ECOM110@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85400936
MARK: TESS
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CORRESPONDENT ADDRESS: HONIGMAN MILLER SCHWARTZ AND COHN LLP |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: T.E.S.S., LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 12/10/2011
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
The applicant has applied to register TESS for “retail and wholesale services in the field of spare parts for boats and yachts; retail and wholesale services in the field of nautical and signaling instruments and apparatus, switchboards, generators, alarm and monitoring systems; shorepower converters, chargers, lighting systems and spare parts thereof; Renovation, refit, repair and maintenance of boats and yachts; installation of nautical and signaling apparatus, switchboards, generators, alarm and monitoring systems; shorepower converters, chargers and lighting systems for boats and yachts.”
The registered mark is TESS for “vessels and their structural parts; accessories for vessels, namely, rescue boat, boat davit, sea ladder, and portholes.”
COMPARISON OF THE MARKS
In the present case, applicant’s mark TESS is identical to the registered mark. Where the marks of the respective parties are identical or virtually identical, the relationship between the relevant goods and/or services need not be as close to support a finding of likelihood of confusion. See In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009); TMEP §1207.01(a).
COMPARISON OF THE GOODS/SERVICES
In this instance the registrant provides vessels and related accessories. A vessel is defined as “a large boat or ship.” See www.macmillandictionary.com. The registrant is providing retail, repair and maintenance services for boats. Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods. TMEP §1207.01(a)(ii); see In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S for retail grocery and general merchandise store services likely to be confused with BIGGS for furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (holding design for distributorship services in the field of health and beauty aids likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (holding 21 CLUB for various items of men’s, boys’, girls’ and women’s clothing likely to be confused with THE “21” CLUB (stylized) for restaurant services and towels); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (holding CAREER IMAGE (stylized) for retail women’s clothing store services and clothing likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (holding STEELCARE INC. for refinishing of furniture, office furniture, and machinery likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (holding similar marks for trucking services and on motor trucks and buses likely to cause confusion).
Since the marks are similar and the goods/services are related, there is a likelihood of confusion as to the source of applicant’s services. Therefore, applicant’s mark is not entitled to registration.
Applicant must respond to the requirement(s) set forth below.
Retail store and wholesale store services in the field of spare parts for boats and yachts; retail store and wholesale store services in the field of nautical and signaling instruments and apparatus, switchboards, generators, alarm and monitoring systems, shorepower converters, chargers, lighting systems and spare parts thereof, in International Class 35.
Renovation, refit, repair and maintenance of boats and yachts; installation of nautical and signaling apparatus, switchboards, generators, alarm and monitoring systems, shorepower converters, chargers and lighting systems for boats and yachts, in International Class 37.
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.
ASSISTANCE
/Tarah Hardy Ludlow/
Trademark Attorney
Law Office 110
571-272-9361
tarah.hardy@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.