To: | Baldwin Filters, Inc. (trademark@leydig.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85899507 - H HASTINGS PREMIUM FILTERS - 277974 |
Sent: | 7/23/2013 10:38:27 PM |
Sent As: | ECOM101@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85899507
MARK: H HASTINGS PREMIUM FILTERS
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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: Baldwin Filters, Inc.
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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: 7/23/2013
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
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.
In this case, the applicant’s mark HASTINGS PREMIUM FILTERS (and design) is similar in sound and appearance to the marks HASTINGS (and design), HASTINGS and HASTINGS in the cited registrations. The design elements in applicant’s mark and registrant’s mark do not distinguish the marks. For a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods and/or services. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)). Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). In this case, it is the wording HASTINGS PREMIUM FILTERS in applicant’s mark and HASTINGS in cited U.S. Registration No. 2032087 that is accorded greater weight in the likelihood of confusion analysis because, as wording, it is more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods.
Despite the differences, the applicant’s mark and cited registered marks all share the confusingly identical sounding, similar appearing and dominant word HASTINGS.
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).
In this case, registrant’s goods are “land vehicle and machine internal combustion engine parts, namely piston rings, spacers and expanders” and “Parts for internal combustion engines of the reciprocating piston type, namely, pistons.” Applicant’s goods are “Oil, air, fuel, and coolant filters for motors and engines; hydraulic filters; filters for transmissions and turbochargers” and “Cabin air filters for vehicles.” The applicant’s goods and registrant’s goods are related because these types of goods are commonly provided and/or sold by the same entities and therefore these goods will be encountered by the same purchasers, giving rise to the mistaken belief that the goods emanate from the same source. The attached Internet evidence consists of third party websites found on the Google Searchable Database. This evidence establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark, and the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Therefore, the applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Evidence obtained from the Internet may be used to support a determination under Trademark Act Section 2(d) that goods and/or services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).
Identification of Goods – Clarification Required – Classes 007 and 011
The wording “Cabin air filters for vehicles” in the Class 011 identification of goods is indefinite and must be clarified because it is overly broad and ambiguous. See TMEP §1402.01.
Applicant must amend each identification of goods to specify the common commercial name of the goods. If there is no common commercial name, applicant must describe the product and its intended uses. See id.
Applicant may adopt the following identification of goods, if accurate:
“Oil, air, fuel, and coolant filters for motors and engines; hydraulic filters [insert use of goods, e.g., for motors and engines]; filters for transmissions and [insert clarification of “turbochargers,” e.g., turbocharger machines], in International Class 007.”
“Cabin air filters for vehicles, namely, [insert clarification, e.g., air filters for vehicle passenger cabins], in International Class 011.”
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.
The word “premium” means more expensive or of higher quality than other similar things. See attached online dictionary definition of this word from MacMillan Dictionary. This wording, along with the word “filter,” is merely descriptive because it describes a characteristic or feature of the goods – that is, the goods are filters that touted as being of higher quality than other similar filters. The applicant’s own identification of goods provides evidence that the word “filters” is merely descriptive of the goods – the identification states that applicant is providing various types of “filters.”
The Office can require an applicant to disclaim an unregistrable part of a mark consisting of particular wording, symbols, numbers, design elements or combinations thereof. 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), the Office can refuse registration of an entire mark if the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. 15 U.S.C. §1052(e). Thus, the Office may require an applicant to disclaim a portion of a mark that, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). See TMEP §§1213, 1213.03.
Failure to comply with a disclaimer requirement can result in a refusal to register the entire mark. TMEP §1213.01(b).
A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark. TMEP§1213. A disclaimer does not affect the appearance of the applied-for mark. See TMEP§1213.10.
A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing. TMEP §§1213, 1213.10.
The following cases further explain the disclaimer requirement: Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983).
No claim is made to the exclusive right to use “PREMIUM FILTERS” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
/Andrew Rhim/
Andrew Rhim
Law Office 101
Phone (571) 272-9711
E-mail: andrew.rhim@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 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.