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: 8/7/2012

 

 

 

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(a), 2.65(a); TMEP §§711, 718.03.

 

Issue Summary

 

2(d) refusal

 

Identification of goods

 

Multiple class application

 

Claim of ownership of prior registrations

 

 

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos.  2740251, 3124700 and 2671748.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

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).

 

 

 

Confusing similarity of the marks

 

The question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods and/or services 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.2d 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).

 

PENTAIR is the first word of the cited registrations and constitutes applicant’s entire mark.  Consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).

 

 

Closely related nature of the goods/services

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

 

Registrant’s goods include pumps, controls, lighting, and heating devices.  Applicant’s goods also include various pumps, controls, lighting, and heating devices and related monitoring, design, engineering and consulting services regarding these goods.

 

Likelihood of confusion is determined on the basis of the goods and/or services as they are identified in the application and registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 1207 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); TMEP §1207.01(a)(iii).

                                                           

When the application describes the goods and/or services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the application encompasses all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  See In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991) (“With reference to the channels of trade, applicant’s argument that its goods are sold only in its own retail stores is not persuasive . . . . There is no restriction [in its identification of goods] as to the channels of trade in which the goods are sold.”); TMEP §1207.01(a)(iii).

 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

If the marks in the cited registrations have been assigned to applicant, applicant may provide evidence of ownership of the marks by satisfying one of the following:

 

(1)  Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded.

 

(2)  Submit copies of documents evidencing the chain of title.

 

(3)  Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:  “Applicant is the owner of U.S. Registration Nos. 2740251 and 2671748.” 

 

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).

 

Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action.  TMEP §503.01(d).

 

Applicant must respond to the requirement(s) set forth below.

 

 

 

Identification of Goods

 

 

The identification of goods is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses. 

 

 

The identification is unacceptable because the field of use for many of the goods is not specified.

 

Required amendments are in bold type.

 

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

 

International Class 6

 

 

Common metals and their alloys; non-electric cables and wires of metal; metal pipes and tubes; metal valves, metal valve fittings, and parts and accessories therefor, all not being parts of machines; metal pipe products and accessories therefor; namely, pipe joints, pipe linings, pipe fittings, metal couplings for pipes, actuators for opening and closing valves, all of the aforesaid goods being made wholly or principally of metal; mounting devices for valves and meters, made of metal; pipe enclosures made of metal; metal building materials, namely metal framing, sheet metal, and flashing; clamps and brackets made of metal; steam traps made of metal; framing made of metal; prefabricated metal buildings, namely, metal life guard stations; manually-operated valves made of metal for use in irrigation systems, marine sewage disposal systems, and solar hot water heating units; metal equipment and accessories for swimming pools, namely, diving towers and diving stands, starting platforms, underwater windows, pool ladders, grab rails, custom rails, fixed lifeguard chairs, drains, poles, strainers, anchor sockets, flanges, main drains, scum gutter drains, vacuum fittings, inlet fittings, fill spouts, valve manifold accessories, underdrains, and skimmers

 

International Class 7

 

Machine and machine tools,namely, list purpose and field of use; valves, valve fittings, and parts and accessories therefor; actuators and parts and accessories therefor; actuator positioners; actuator controls; all of the aforesaid goods being parts of machinery; dust and particle collection equipment; electric compressors; electric motors for machines; windmills; swimming pool pump manifolds; pump impellers; submersible pumps; suction pumps; windmill pumps; pumps for use with swimming pools, spas, hot tubs, water parks, and ponds, namely, centrifugal pumps, variable frequency drive pumps, and turbine pumps; pumps, heaters, pipes, pipe fittings, and nozzles sold as a unit for use in swimming pool water circulation systems; pool and spa vacuum cleaners, namely above-ground pool vacuum cleaners and automatic cleaning machines, automatic vacuum cleaners, robotic vacuum cleaners, suction pool cleaners, vacuum suction cleaners, multifunction vacuum/skimmer attachments, and parts for all of the foregoing; vacuum heads for cleaning swimming pools; electric pumps for pressure side cleaners and water boosting applications for swimming pools, spas, water parks, ponds, and fountains; propulsive device, namely, a hydraulically-operated mechanism adapted for attachment to an automatic swimming pool cleaner to periodically reverse the direction of cleaner movement; power-operated lifts for use in assisting handicapped persons with entry into swimming pools; hydraulically operated chlorine/bromine dispensing machines for use in swimming pools; chemical dispensing machines for use in swimming pools; water pumps for use with ponds, natural and man-made lakes, rivers, streams, waterfalls, water fountains, water gardens, and other water features; water pumps for use with fish hatcheries, hydroponics, and aquariums; water pumps for use in aquaculture; water pumps for aeration equipment; water treatment pumps for irrigation

 

International Class 9

Diagnostic apparatus and instruments, not for medical use for testing [indicate field of use]; environmental sensors and detectors for detecting [indicate field of use]; monitoring and control apparatus and instruments for [indicate field of use]; electrical cables; electromechanical cables; electric and electronic control panels; electric connections; junction boxes; circuit breakers; electrical and electronic valves, valve fittings, and parts and accessories therefor for controlling fluids; volt meters; electronic measuring, monitoring, detection, indication, regulation and analyzing equipment, namely,  fluid and liquid flow meters, water quality sensors, water quality analyzers, liquid level and liquid depth sensors, all for use with swimming pools and spas;  heat registers; thermometers; thermostats; conduits for electric cables and parts and fittings therefor; cathodes; electronic snow melting cables; telemetry systems consisting essentially of [list major components and field of use]; leak detection and locating apparatus for use with swimming pool and spa pumps; level gauges; downloadable software in the field of energy cost analysis, configuration, and monitoring of heat management systems and environmental monitoring and data analysis; electrical connectors; electrical circuit protection devices; metalized particle interconnects; electrical wires and cables   electronic voltage monitor modules; Encoded micro particulates, tags and taggants of plastic, metal or silicate for use in the field of passive labeling, tracing or tracking of persons, animals, vehicles or goods of any kind ; battery packs; battery terminal blocks and switches; electricity conduits; underwater electrical power cables and standard connectors; electrical interconnection devices, namely, terminals and splices; connectors; electrical terminals and connections, namely crimp terminals, uninsulated and insulated terminals; control panels and monitors for fire alarm detection, fire extinguishing, and carbon dioxide fire suppression systems; fire alarms; fire extinguishers; fire sprinklers; fire hose nozzles; automatic valves, automatic valve fittings, and parts and accessories therefor; electric actuators for machines; automatic sprinkler systems and parts therefor, all for fire protection; alarm valves for fire protection sprinkler systems. electrical fusible links, namely, heat detecting devices in fire protection systems and fire department connections, namely, connectors to fire protection systems from which additional water can be pumped; water motor alarms for use in fire sprinkler systems; pool and spa control systems, namely, pool and spa controls for programming the timing and duration of heating, lighting, and pumping cycles; remote control units and wireless remote control units for controlling operations of pools and spas; electrical control units for controlling the operation of pool and spa lights, heaters, cleaners, and pumps; electronic communications panel for controlling the heating, lighting, and cleaning operations of pools, spas, water parks, and fountain pumps; touch panel interface for pool and spa control systems and home automation; touch panel interface and protocol adapter for pool and spa control systems and home automation; electronic controllers for use with solar heating systems for swimming pools and spas; fiber-optic cable; electrical controllers for landscape lighting; programmable controllers for automating, monitoring, and controlling the dosage and dispersion of water treatment chemicals into swimming pools, spas, hot tubs, water parks, and ponds; electrolytic chlorinators comprising a power supply, electrolytic cell and flow and salinity sensor for swimming pools and spas; electric motor control units for swimming pools, spas, water parks, and fountain pumps; electronic valve actuators; thermometers; water pressure gauges; metered floating chlorine dispensers; electronic controllers for monitoring the functions of ponds, natural and man-made lakes, rivers, streams, waterfalls, water fountains, water gardens, and other water features. electronic controllers for monitoring the functions of fish hatcheries, hydroponics, aquaculture, and aquariums; electronic controllers for monitoring the functions of aeration equipment; electronic controllers for monitoring the functions of irrigation equipment

 

 

International Class 11

Refrigerators; heat pumps; water heaters; water filtering apparatus; water purifying apparatus and machines; water purification installations; water softening apparatus; electric water heaters; agricultural irrigation units; pressure water tanks and parts therefor; air purification and filtration apparatus; heating elements; heating cables and mats; electric floor heating cable systems consisting essentially of  heating mats, pads, and sheets; heating apparatus for pipes, vessels, tanks, and architectural surfaces; heating apparatus for solid, liquid, or gaseous materials; immersion heaters; glue-heating appliances; heating filaments; electric unit heaters; sprinkler heads; plumbing fittings, namely, dry pipe valves and accessories, namely accelerators; air maintenance devices, namely, devices used to maintain proper air pressure in sprinkler systems; plumbing fittings, namely post indicator valves to open or close a valve or to indicate the position of a valve; apparatus for heating, drying, water supply and sanitary purposes, namely, water supply pumps; fire hydrants; underwater pool and spa lights and lighting fixtures; interior lights for swimming pools; above-ground pool lights; niches for swimming pool and spa lighting; landscape lighting; landscape lighting installations and fixtures; fiber optic lighting fixtures; light sources for fiber optic cables; water filters for swimming pools, spas, hot tubs, ponds, and water parks; filtration units comprised of a filter and module for use with swimming pools and spas; pool and spa cartridge water filters; replacement filter cartridges for swimming pools and spas. filter laterals with porous body for replacement cartridges and upgrade kits for use with swimming pools and spas; in-line filters for use with swimming pools and spas; aquarium and pond filters and filtration apparatus; swimming pool water cleaning and filtering units; sand filters for use with swimming pools, water parks, aquariums, and industrial water treatment applications; diatomaceous earth water filters for use with swimming pools and spas; purification installations for sewage; automatic and front-access skimmers for use in removing foreign particles from swimming pool water; water inlet, outlet, and directional fittings for use with swimming pools and spas; drain rings, grates, and cup anchors for use with swimming pools and spas; ultraviolet sterilizers for ponds and aquaculture; above-ground swimming pool skimmers; side-wall pool skimmers; ozone water purification unit for use in the purification and sanitizing of water in swimming pools, spas, fountains, agriculture systems, aquaculture, cooling towers, drinking water systems, theme park displays and aquariums; automatic chlorine generators for swimming pools, spas and water parks; heat pumps to heat water in swimming pools and spas; gas heaters and boilers for pools, spas, theme parks, and water parks; pool and spa water heaters and pool and spa water heating systems; valves for use with swimming pools, spas, hot tubs, ponds, and water parks; water flow control valves for use in industries and applications where control of high volume flow of water is needed; a waterfall delivery system for swimming pools, spas, fountains, and ponds; ornamental and decorative water fountains. laminar water jet with deck box for use with pools, spas, ponds, and water fountains; automatic watering installations for agricultural use; plumbing supplies, namely, clamping assemblies comprised of rings, clamps, knobs and thread connectors used for spa and pool filtration tanks; drain covers, frames, and grates for pools, spas, ponds, and water parks; automatic water systems for swimming pool and spa use, each sold as a unit, comprising pump, motor, tank and parts therefor; filters, heaters, and air blowers, sold in combination, for use in heated pool spas; water return fittings; apparatus and dripper irrigation system for water treatment which is comprised of filters, pumps, regulators, and heaters sold in combination for use on swimming pools, waterparks, aquariums, zoos containing water areas and aquaculture; filters for use with ponds, natural and man-made lakes, rivers, streams, waterfalls, water fountains, water gardens, and other water features; filters for use with fish hatcheries, hydroponics, and aquariums; filters for use in aquaculture; filters for use in aeration equipment; filters for use in irrigation systems

 

International Class 17

 

Flexible pipes, not of metal; adhesive tape for industrial and commercial use; plastic pipes and electrical and fluid conduits and couplings and fittings therefor; pipe insulation; heat shrinkable tubing for covering wires; valves and valve parts and accessories; all of the aforesaid goods being made wholly or principally of rubber; non-metallic seals for swimming pool cleaners

 

International Class 19

 

Non-metal architectural moldings

 

International Class 35

Inventory control and consulting in the fields of valves, temperature sensing heat tracing, heat management, pipelines, fluid and gas leak detection, and water and waste water systems.

International Class 36

Financing services; financial asset management, all relating to plant, equipment, and machinery

International Class 37

Construction, repair, installation, maintenance, and  inspection in the course of construction, all relating to water and waste water systems, pipelines, electronic monitoring equipment and apparatus, temperature sensing, heat tracing and heat management systems, snow melting and de-icing systems; pipeline tapping services; fluid and gas leak detection services; installation and maintenance of commercial and residential electronic security systems; installation and maintenance of fire protection systems; and installation and maintenance for electrical communications systems

International Class 40

Environmental remediation services, namely, treatment of waste water; water treatment services;

International Class 41

Training regarding use and operation of valves, temperature sensing, heat tracing, heat management, pipelines, fluid and gas leak detection, and water and waste water systems

International Class 42

Greenhouse gas emission measuring and analysis; consulting in the field of engineering; design, calibration and monitoring services relating to systems for heating and cooling, sealing and corrosion protection systems; engineering services, namely, technical project planning and system and process design services relating to water supply, drinking water treatment, rainwater facilities, water systems, and hydraulic equipment; technical consultancy regarding environmental science; calibration and testing services relating to systems for heating and cooling, sealing and corrosion protection systems; non-downloadable software in the field of heating and cooling system design; inspection of fire protection systems; inspection of electrical communication systems; Environmental services, namely, technical consultation in the field of environmental science, engineering services and design for others in the field of environmental engineering

International Class 45

monitoring of commercial and residential electronic security systems; burglar and fire alarm services, namely monitoring signals from the subscriber and dispatching instructions.

 

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.uspto.gov/netahtml/tidm.html.  See TMEP §1402.04.

 

 

 

 

Mulitple class application

 

The application identifies goods and/or services that are classified in at least 13 classes; however, the fees submitted are sufficient for only 11 class(es).  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all 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.

 

(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/trademarks/tm_fee_info.jsp).

 

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).

 

 

 

 

Claim of ownership of prior registrations

 

If applicant owns U.S. Registration Nos. 2591597 and  2573714, then applicant must submit for the application record a claim of ownership of these registrations.  See 37 C.F.R. §2.36; TMEP §812.  See the attached copies of the registrations.  See TMEP §812. 

 

Applicant may use the following format to claim ownership of these registrations:

 

Applicant is the owner of U.S. Registration Nos. 2591597 and  2573714.

 

 

 

 

RESPONSE TO OFFICE ACTION

 

 

 

 

Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

 

 

/John E. Michos/

Trademark Attorney

Law Office 105

571 272-9197

john.michos@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.uspto.gov/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.uspto.gov/.  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.uspto.gov/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/teas/eTEASpageE.htm.