UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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APPLICATION SERIAL NO. 85496342
MARK: GUARDIAN
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: The Whitmore Manufacturing Company
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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.
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, 2.65(a); TMEP §§711, 718.03.
Section 2(d) Refusal – Likelihood of Confusion
The applicant has applied to register GUARDIAN for “Breather filters for fluid reservoirs for use in mechanical systems, gear boxes for stationary machinery and container vessels and tanks for industrial fluids.”
The registered marks are:
GUARDIAN ADSORBER SERIES for “Steel tanks lined with activated carbon for the storage of both liquids and gases”
GUARDIAN for “Metal oil cans sold empty, and oil can spouts”
GUARDIAN for “portable hand held fluid filtration systems for filtering lubricants, industrial oils and the like, consisting of a pump, electric motor and a filter plumbed together and housed in a compact enclosure”
GUARDIAN for “fitted plastic inserts for use as liners for containers of liquid”
Test for Likelihood of Confusion
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 and/or services 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 of 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. 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.
Factors Used in Determining a Likelihood of Confusion
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 Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
I. COMPARISON OF THE MARKS
General Test for 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). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
Factors Applied to Applicant’s Mark
In the present case, applicant’s mark is identical to the registered marks comprising only the term GUARDIAN. With respect to those marks, all of the marks would yield the same commercial impression.
With respect to registered mark GUARDIAN ADSORBER SERIES, applicant merely deletes descriptive disclaimed wording from the registered mark. This difference is insufficient in distinguishing the marks, as consumers and purchasers would readily recognize GUARDIAN as the dominant feature of the mark. The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Optical Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(b)(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.
Overall, applicant’s mark and the cited mark impart confusingly similar commercial impressions.
II. COMPARISON OF THE GOODS/SERVICES
General Test for Comparison of Goods/Services
Factors Applied to Applicant’s Mark
Applicant’s goods are related to the goods of registrants because applicant offers goods that would encompass the goods of registrants. Applicant’s “container vessels and tanks for industrial fluids” is broad enough to include the “metal oil cans sold empty” as well as the “Steel tanks lined with activated carbon for the storage of both liquids and gases” of registrants in reg. nos. 2701880 and 3229810.
Further, applicant’s containers would be sold or offered with the fitted plastic inserts for containers offered by reg. no. 1942289. Please see the attached companies Grayling and CAPS both offering liquid containers as well as liners.
Finally, parties that offer filter goods often offer a variety of such goods. Please see the attached third-party registrations of parties that offer both filtration apparatus and filters.
Accordingly, both applicant’s goods and the goods in the registered marks would move in the same channels of trade such that they would be encountered together.
Since the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, applicant’s mark must be refused registration under Section 2(d) of the Trademark Act.
Applicant May Respond to Refusal
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
If applicant chooses to respond to the refusal, applicant must also respond to the requirements set forth below.
The wording in the identification of goods is indefinite and must be clarified because it includes goods in multiple classes. Containers are classified according to material composition, with metal containers in Class 006 and non-metal containers in Class 020. Filters and gear boxes for machinery are found in Class 007. See TMEP §1402.01.
Applicant may change this wording to the following, if accurate:
Class 006: Container vessels and tanks of metal for industrial fluids
Class 007: Filters for {specify machine or industry} machines, namely, breather filters for fluid reservoirs for use in mechanical systems; gear boxes for stationary machinery
Class 020: Non-metal container vessels and tanks for industrial fluids
See TMEP §1402.01.
Identifications of goods can be amended 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. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
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.
If applicant chooses to add classes: For an application with more than one international class, called a “multiple-class application,” an applicant must meet all of the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):
(1) LIST GOODS AND/OR SERVICES BY INTERNATIONAL CLASS: Applicant must list the goods and/or services by international class; and
(2) PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”).
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
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 §§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.
USPTO
/Hélène Liwinski/
Trademark Examining Attorney
Law Office 104
571.272.1874 phone
571.273.9104 fax
helene.liwinski@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.