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:

 

 

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.

 

Summary of Issues:

 

• Likelihood of confusion refusal
• Identification of goods

 

SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2604212, 2915506 and 3250102.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

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.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services.  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.

 

The applicant seeks to register the mark ENDURA in standard characters for “Boilers, namely, steam heating boilers, hot water boilers, and hydronic boilers; water heaters; components for heating boilers and water heaters, namely, heat exchangers, valves in the nature of plumbing fittings and pressure vessels.” 

 

The registered marks are as follows:

 

U.S. Registration No. 2604212 – ENDURA for “Plumbing supply, namely, floor drains”

U.S. Registration No. 2915506 – ENDURA for “Portable high pressure washing machines, comprising a pump, hose and spray gun for cleaning vehicles, structures and equipment”

U.S. Registration No. 3250102 – ENDURA for “Plumbing supplies, namely, grease interceptors and closet flange repair rings”

 

Comparison of Marks

 

The marks are identical in that they are comprised of the wording ENDURA.  That the registered marks are described as presented in “typed” format does not alter the similarities in the marks because, effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. §2.52, was amended to replace the term “typed” drawing with “standard character” drawing. As such, the marks are identical and thus convey identical commercial impressions.  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 Goods

 

Applicant has included the broad wording “pressure vessels” in its identification.  It is unclear as to the types of vessels identified in this wording, and its broad nature must be interpreted to encompass all types of pressure vessels, including the more specific goods identified in U.S. Registration No. 2915506 as “Portable high pressure washing machines, comprising a pump, hose and spray gun for cleaning vehicles, structures and equipment.”

 

The goods “valves in the nature of plumbing fittings” are related to the goods identified in U.S. Registration No. 2604212 (“Plumbing supply, namely, floor drains”) and U.S. Registration No. 3250102 (“Plumbing supplies, namely, grease interceptors and closet flange repair rings”) in that they are types of plumbing fittings.  Moreover, as the following attached Internet evidence shows, such goods are often sold together in plumbing sections of hardware stores:  Home Depot (features valves, water heaters, flange repair rings, and drains), Lowe’s (features valves, water heaters, drains and flange repair rings) and plumbingsupply.com (features valves, grease interceptors, water boilers and drains).

 

Because the goods are related and may encompass one another, they are likely to be encountered by the same class of potential consumers.  Consumers who encounter identical marks for similar or related goods are likely to be confused as to their source.  Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.

 

Although the examining attorney has refused registration, the applicant may present arguments in support of registration.  In addition, the applicant must also respond to the following requirement:

 

IDENTIFICATION OF GOODS

 

The identification of goods reads as follows:

 

Boilers, namely, steam heating boilers, hot water boilers, and hydronic boilers; water heaters; components for heating boilers and water heaters, namely, heat exchangers, valves in the nature of plumbing fittings and pressure vessels.

 

The identification of goods must be clarified because the wording “pressure vessels” is indefinite and does not specifically identify the types of vessels.  Therefore, applicant must clarify this wording by identifying the types of vessels.  See TMEP §1402.01.

 

Applicant may adopt the following identification of goods, if accurate: 

 

Boilers, namely, steam heating boilers, hot water boilers, and hydronic boilers; water heaters; components for heating boilers and water heaters, namely, heat exchangers, valves in the nature of plumbing fittings and pressure vessels, namely, ]specify, e.g., electric pressure cookers], in International Class 11

 

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.

 

 

 

 

 

/Melissa Vallillo/

Trademark Examining Attorney

Law Office 113

(571) 272-5891

melissa.vallillo@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.