To: | Specialty Coating & Laminating, LLC (jthomas@ip-counsel.net) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85729018 - CONFORM - SPECOAT 5T |
Sent: | 6/26/2013 7:15:48 PM |
Sent As: | ECOM116@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 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85729018
MARK: CONFORM
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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: Specialty Coating & Laminating, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 6/26/2013
THIS IS A FINAL ACTION.
This letter responds to applicant’s communication filed May 31, 2013 in which applicant argued against the refusal under Section 2(d). Applicant’s arguments have been considered and found unpersuasive and the refusal is maintained and made final.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – MADE FINAL
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3690142. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. This refusal is maintained and made final.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Registrant uses the mark for “Pre-fabricated plastic building wall structures and parts and components thereof; building materials, namely, structural components of extruded plastic, namely, interlocking wall forming panels with pre-finished walls and hollow interior compartments to receive fluid or flowable materials, namely, insulation, sand and/or concrete and connectors and joiners therefor.” Applicant intends to use the mark for “non-metal flashing.”
In this case, the wording “pre-fabricated plastic building wall structures and parts and components thereof” is broad and encompasses all types of prefabricated plastic wall structures and their parts. As the attached evidence from www.epa.gov, www.nachi.org, www.hgtvremodels.com, www.seakliving.com, and buildingcodes.jocogov.org shows, flashing is a component of a building’s wall structure. Registrant’s goods encompass the type of exterior wall structures that flashings are used with. The goods would be used by the same consumers, namely, builders. Builders who encounter wall structures and wall components in the nature of flashing marketed under the same mark are likely to believe they emanate from a single source.
Applicant argues that because applicant’s goods are advertised as being weather resistant, they will not be used with flashing; however, the evidence from registrant’s website submitted by applicant states that its wall systems fit “a variety of conventional roof structures, windows and door systems.” As the attached evidence shows, flashing is used at the intersections of walls with roofs, windows, and doors. Because registrant’s wall systems are used with the same roofs, windows, and doors as other wall systems, flashing would be required to protect the intersection between the wall systems and the other structural components.
Applicant argues that the existence of a prior registration for CONFORM FABRICS for “textile fabrics used in the manufacture of structural components used in industrial and commercial products such as building components, vehicles and aerospace components and the like” obviates the likelihood of confusion in this case. As applicant acknowledges in its response, third-party registrations are entitled to little weight on the question of likelihood of confusion because they are “not evidence that the registered marks are actually in use or that the public is familiar with them.” In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1167 n.5 (TTAB 2013) (citing In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)); see TMEP §1207.01(d)(iii). Moreover, the existence on the register of other seemingly similar marks does not provide a basis for registrability for the applied-for mark. AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Total Quality Group, Inc., 51 USPQ2d 1474, 1477 (TTAB 1999). Furthermore, the goods in this registration are distinguishable from the goods in the current application and cited registration because they are for used in the manufacture of finished goods. They are not finished construction materials that would be used together by builders.
The goods are closely related.
When confronted with closely related goods bearing identical marks, a consumer is likely to have the mistaken belief that the goods originate from the same source. Because this likelihood of confusion exists, registration must be refused.
RESPONSE TO A FINAL ACTION
(1) A response that fully satisfies all outstanding requirements;
(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/Kristina Morris/
Examining Attorney
Law Office 116
571-272-5895
kristina.morris@uspto.gov (informal queries only)
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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.