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: 12/28/2011

 

OPEN APPLICATION ISSUES THAT MUST BE ADDRESSED IN RESPONSE TO OFFICE ACTION:

 

The following are the open application issues that the applicant must address in order to have a complete response to this Office action:

 

-Refusal to Register Under Section 2(d) of the Trademark Act

 

-Requirement for Clarification of Indefinite Identification Language

________________________________________________________________________

 

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

 

Refusal to Register Under Section 2(d) of the Trademark Act –Likelihood of Confusion Exists Between the Proposed Mark and Cited Registration

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 1482869. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

The proposed mark is MILEX for “Unprocessed synthetic resins; Unprocessed plastics in all forms; Unprocessed plastics for industrial use; Phenolic resins; Industrial chemicals’ Chemical additives for industrial use in a wide variety of goods; Hardeners with an epoxy resin base, namely, hardening agents for industrial use; Hardening agents for industrial use; Chemical photoresists; Adhesives for industrial purposes; Chemical binding agents for industrial use in a wide variety of goofs; Binder resins for industrial use; Chemical binding for use in the manufacture of brake pads.”

 

The cited registration is IMILEX for “Chemical, namely, N-Phenyl Maleimide for use in the manufacture of chemical compounds used as resin softening agents and resin modifying agents.”

 

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

 

The marks at issue IMILEX /MILEX are nearly identical. 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).

 

The question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods they identify come from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  See Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).

 

In this case, the nearly identical spelling of the marks share a highly similar sound and appearance are factors that combine to create a nearly identical commercial meaning that is shared between the marks at issue here. The marks at issue sound similar and similarity in sound alone may be sufficient to support a finding that the marks are 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)(iv).

 

The applicant’s proposal to delete the “I” prefacing the wording “MILEX” in the cited registration is insufficient to differentiate the marks at issue which share an otherwise identical appearance. The mere deletion of matter 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). 

 

In this case, the 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. The nearly identical marks share an overall confusingly similar commercial impression which supports a refusal to register in this case.

 

 

Comparison of the Goods

 

The registrant has broadly identified its goods as “N-Phenyl Maleimide …used as resin modifying agents.”

 

The applicant has more narrowly identified its goods as “Phenolic resins; Hardeners with an epoxy resin base, namely, hardening agents for industrial use; Hardening agents for industrial use” and “Chemical binding agents for industrial use in a wide variety of goofs; Binder resins for industrial use.” All of these goods identified by the applicant are “resin modifying agents,” thus the registrant’s broadly worded identification encompasses the applicant’s goods, making them legally identical in this case.. In a likelihood of confusion analysis, the comparison of the parties’ goods is based on the goods 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 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 of the type described, including those in applicant’s more specific identification, that the goods 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).

 

Additionally, the applicant’s broadly worded “industrial chemicals” goods wholly encompass the registrant’s more narrowly identified “N-Phenyl Maleimide for use in the manufacture of chemical compounds used as resin softening agents and resin modifying agents” making the goods legally identical. The multiple cross-overs between the applicant’s and registrant’s identification language only emphasizes the fact that the goods at issue here are closely related in this case.

 

In a likelihood of confusion analysis, the comparison of the parties’ goods is based on the goods 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, applicant’s goods are identified broadly.  Therefore, it is presumed that the application encompasses all goods of the type described, including those in the registrant’s more specific identification, that the goods move in all normal channels of trade, and that they are available to all potential customers.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re La Peregrina Ltd., 86 USPQ2d 1645, 1646 (TTAB 2008); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); TMEP §1207.01(a)(iii).

 

A likelihood of confusion results when the confusingly similar commercial impression shared by the marks is combined in use in the market for the legally identical and closely related goods. Accordingly, registration of the mark sought in this application is hereby refused under Section 2(d) of the Trademark Act in this case. Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. The applicant must respond to the requirements set forth below.

 

Requirement for Clarification of Indefinite Identification of Goods

 

The identification of goods is unacceptable as indefinite. The applicant must clarify the identification as follows. TMEP §1402.01.

 

The wording “Chemical additives for industrial use in a wide variety of goods; Hardeners with an epoxy resin base, namely, hardening agents for industrial use; Hardening agents for industrial use; Chemical binding agents for industrial use in a wide variety of goods; Binder resins for industrial use” in the identification of goods must be clarified because it is indefinite as to an acceptably specific intended use and purpose for the goods. See TMEP §§1402.01, 1402.03. 

 

The applicant may substitute the following wording, if accurate:

 

“Chemical additives for general industrial use in the manufacture of a wide variety of goods,” “Hardeners with an epoxy resin base, namely, hardening agents for industrial use in the manufacture of {specify goods to be made, e.g., flexible foams, rigid foams, elastomers, plastics},” “Chemical binding agents for industrial use in the manufacture of {specify goods, e.g., feed pellets, textiles, fabrics, furs}” and “Binder resins for industrial foundry use.”

 

Please also note that parentheses are not acceptable in the identification. TMEP §1402.12. Where indicated “{specify … },” the examining attorney has merely suggested ways to cure the indefiniteness of the identification. The applicant must list the goods without parentheses.

 

The following is a sufficiently definite identification of the goods recited in this application that the applicant may choose to adopt, if accurate:

 

Unprocessed synthetic resins; Unprocessed plastics in all forms; Unprocessed plastics for industrial use; Phenolic resins; Industrial chemicals; Chemical additives for general industrial use in the manufacture of a wide variety of goods; Hardeners with an epoxy resin base, namely, hardening agents for industrial use in the manufacture of  flexible foams, rigid foams, elastomers and plastics; Chemical photoresists; Adhesives for industrial purposes; Chemical binding agents for industrial use in the manufacture of textiles, fabrics and furs; Binder resins for industrial foundry use; Chemical binding for use in the manufacture of brake pads.

 

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.

 

An applicant may amend an identification of goods 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 et seq. 

 

If applicant has any questions about its application or needs assistance in responding to this Office Action please telephone the assigned trademark examining attorney directly at the number listed below.

 

 

/Amy C. Kean/

Trademark Attorney, Law Office 113

U.S. Patent & Trademark Office

P.O. Box 1451

Alexandria, VA 2231

Amy.Kean@USPTO.gov

Phone: 571-272-8854

 

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 12/28/2011 FOR

SERIAL NO. 85417367

 

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 12/28/2011 (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.