To: | Dionex Softron GmbH (tmdocketing@raderfishman.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86359576 - VANQUISH - 67460-0001 |
Sent: | 11/20/2014 11:46:51 AM |
Sent As: | ECOM107@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86359576
MARK: VANQUISH
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CORRESPONDENT ADDRESS: RADER, FISHMAN AND GRAUER PLLC |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Dionex Softron GmbH
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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: 11/20/2014
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.
Section 2(d) Refusal– Likelihood of Confusion
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. 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.
Comparison of the Marks
In the present case, the applicant’s mark, VANQUISH, is identical to the registrants’ marks, VANQUISH, and will lead to consumer confusion. 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 the Goods and/or Services
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)); TMEP §1207.01(a)(i).
Here, the applicant’s goods, namely “chemical reagents; chemical solvents; chemical reagents, compounds and solvents for use in the clinical diagnostic field; chemical reagents, compounds and solvents for use in the field of liquid chromatography; chemical reagents, compounds and solvents for use with liquid chromatographs for analyzing biological or human samples in the clinical diagnostic field; liquid chromatographs and parts therefor; laboratory apparatus and instruments for separating one or more compounds from a solution; liquid chromatographs for use in identifying, quantifying and purifying individual components of a mixture; laboratory apparatus and instruments, namely, chromatography columns, pipettors, dispensers, tubes and tube handlers; liquid chromatographs and parts therefor; laboratory apparatus and instruments for separating one or more compounds from a solution; liquid chromatographs for use in identifying, quantifying and purifying individual components of a mixture; laboratory apparatus and instruments, namely, chromatography columns, pipettors, dispensers, tubes and tube handlers; all of the foregoing for clinical diagnostic or medical diagnostic use;” are closely related to the registrant’s goods, namely “biocidal chemicals; antimicrobial preparations; biocidal chemicals for use in the manufacture of grouts and waterproof membranes; antimicrobial preparations for use in the manufacture of grouts and waterproof membranes; grouts; waterproof membranes” (U.S. Reg. No. 3165848); “biocidal chemicals for use in the manufacture of molded plastic articles, plastic sheeting, processed plastics, namely, plastics in the form of sheets, films and foils, for the purpose of preventing and inhibiting fungal and bacterial growth” (U.S. Reg. No. 2873034); and “chemical compositions for sequestering impurities in and clarifying swimming pool, spa and hot tub water” (U.S. Reg. No. 2059946), because, with respect to applicant’s and registrant’s goods and/or services, the question of likelihood of confusion is determined based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Absent restrictions in an application and/or registration, the identified goods and/or services are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and/or services travel in all normal channels of trade, and are available to the same class of purchasers. Further, the application uses broad wording to describe the goods and/or services and this wording is presumed to encompass all goods and/or services of the type described, including those in registrant’s more narrow identification.
Accordingly, because confusion as to source is likely, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Applicant must respond to the requirement(s) set forth below.
Identification of Goods and/or Services Amendment Requirement
Here, the wording specified below in the identification of goods and/or services must be clarified because it is too broad and could include goods and/or services in other international classes. See TMEP §§1402.01, 1402.03.
Also, applicant classified what appears to be laboratory goods in International Class 10; however, the correct classification is International Class 9. Applicant must either delete these goods and/or services or move the goods to Class 9. 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.04(b).
Proper classification of goods and services is a purely administrative matter within the sole discretion of the United States Patent and Trademark Office. In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969).
For the applicant’s convenience, the Examining Attorney has highlighted suggested amendments and problem areas in bold type below. The applicant may adopt following wording, if accurate, because it is sufficiently definite and properly classified:
“Chemical reagents, namely, {specify by common commercial name, e.g., “chemical reagents for non-medical purposes”}; Chemical solvents, namely, {specify by common commercial name, e.g., “chemical preparations in the nature of degreasing and cleaning solvents”}; Chemical reagents, compounds and solvents for use in the clinical diagnostic field, namely, {specify by common commercial name, e.g., “diagnostic preparations for scientific use”}; Chemical reagents, compounds and solvents for use in the field of liquid chromatography, namely, {specify by common commercial name, e.g., “diagnostic preparations for scientific or research use”}; Chemical reagents, compounds and solvents for use with liquid chromatographs for analyzing biological or human samples in the clinical diagnostic field, namely, {specify by common commercial name, e.g., “diagnostic preparations for scientific or research use”},” in International Class 1;
“Liquid chromatographs and parts therefor, namely, {specify the wording “parts therefor” by common commercial name, e.g., “pipettes”}; Laboratory apparatus and instruments for separating one or more compounds from a solution, namely, {specify by common commercial name, e.g., “pipettes”}; Liquid chromatographs for use in identifying, quantifying and purifying individual components of a mixture for laboratory use; Laboratory apparatus and instruments {specify function, e.g., “for performing chromatography”}, namely, chromatography columns, pipettors, dispensers, tubes and tube handlers,” in International Class 9;
“Liquid chromatographs and parts therefor {move to Class 9 and specify the wording}; Laboratory apparatus and instruments for separating one or more compounds from a solution, namely, {specify by common commercial name and classify accordingly}; Liquid chromatographs for use in identifying, quantifying and purifying individual components of a mixture{move to Class 9 and specify the wording}; Laboratory apparatus and instruments, namely, chromatography columns, pipettors, dispensers, tubes and tube handlers{move to Class 9 and specify the wording}; All of the foregoing for clinical diagnostic or medical diagnostic use {this wording does not conform with the previous “laboratory wording”},” in International Class 10.
See TMEP §1402.01.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
§44 Requirement
Although Section 44(d) provides a basis for filing and a priority filing date, it does not provide a basis for publication or registration. 37 C.F.R. §2.34(a)(4)(iii); TMEP §§1002.02, 1003.03. It is unclear whether applicant intends to rely on Section 44(e) as an additional basis for registration.
Therefore, applicant must clarify the basis in the application by satisfying one of the following:
(1) If applicant intends to rely on Section 44(e), in addition to Section 1(b), as a basis for registration, applicant must so specify. In addition, (a) applicant’s country of origin must either be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law; and (b) applicant must submit a true copy, photocopy, certification or certified copy of the foreign registration from applicant’s country of origin. See 15 U.S.C. §1126(b)-(c), (e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1002.01, 1004, 1016. A copy of the foreign registration must be a copy of a document that issued to applicant by or was certified by the intellectual property office in applicant’s country of origin. TMEP §1004.01. If the foreign registration is not written in English, then applicant must provide an English translation. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b). If the foreign registration has not yet issued, or applicant requires additional time to procure a copy of the foreign registration (and English translation, as appropriate), applicant should so inform the trademark examining attorney and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(b).
(2) If applicant does not intend to rely on Section 44(e) as a basis for registration but still wants to retain the Section 44(d) priority filing date, applicant must so specify and request that the mark be approved for publication based solely on the Section 1(b) basis. See TMEP §§806.02(f), 806.04(b), 1003.04(b). Although the mark may be approved for publication on the Section 1(b) basis, it will not register until an acceptable allegation of use has been filed. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.
Assistance
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.
/James W. Stein/
Trademark Examining Attorney
Law Office 107
Phone: 571.272.3056
james.stein@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.