To: | SPS Schutzplanken GmbH (docketing@roylance.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86557011 - SPS - 62605 |
Sent: | 6/13/2015 12:27:34 PM |
Sent As: | ECOM105@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86557011
MARK: SPS
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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: SPS Schutzplanken 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: 6/13/2015
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
SUMMARY OF ISSUES
SECTION 2(d) REFUSAL- LIKELIHOOD OF CONFUSION
U.S. Registration No. 1085885 for the mark SPS for metal fasteners and fastener devices-namely, nuts, bolts, screws, pins, plugs and collars
U.S. Registration No. 1085886 for the mark SPS for metal fasteners and fastener devices-namely, nuts, bolts, screws, pins, plugs and collars
U.S. Registration No. 2695815 for the mark SPS for data collection services, namely obtaining, evaluating, and analyzing data in the field of engineering and equipment reliability; and consulting services in the field of engineering and equipment reliability
U.S. Registration No. 2697891 for the mark SPS and design for data collection services, namely obtaining, evaluating, and analyzing data in the field of engineering and equipment reliability; and consulting services in the field of engineering and equipment reliability
U.S. Registration No. 2808775 for the mark SPS and design for data collection services, namely obtaining, evaluating, and analyzing data in the field of engineering and equipment reliability; and consulting services in the field of engineering and reliability
U.S. Registration No. 3206728 for the mark SPS for application service provider, namely, hosting software applications and providing non-downloadable software to others relating to the delivery and management of capital assets, design management, production management, supply chain management, fabrication, value stream management, and management of logistics and final assembly in the construction, fixed position manufacturing and logistics management fields; consulting services relating to software application configuration and organizational development in the construction, fixed positions manufacturing and logistics management fields
U.S. Registration No. 4428271 for the mark SPS for providing temporary use of on-line non-downloadable software for use in data collection in the field of engineering and equipment reliability
U.S. Registration No. 4428274 for the mark SPS and design providing temporary use of on-line non-downloadable software for use in data collection in the field of engineering and equipment reliability
U.S. Registration No. 4244960 for the mark SPS for engineering and systems engineering services in the fields of three dimensional computer modeling and simulation for use in military operations, project management, logistical support services, inventory control, fielding new government weapons and equipment, and acquisition and lifecycle management of software-intensive systems; software engineering services
Applicant’s mark is SPS for Traffic route control systems mainly consisting of steel guard rails, single or double safety fences, mobile and stationary guide walls and guard walls of steel or steel combined with concrete, mobile and stationary impact absorbers of steel or steel combined with concrete, in particular finished steel parts and protection systems consisting thereof; energy-absorbing arch heads, including being parts of steel guard rails for traffic routes, end-constructions for protective devices, including guard walls and guard rails; junctions and connectors for passive protective devices for roads; all of the aforesaid goods consisting wholly or predominantly of steel; anchors of steel, steel posts, including the aforesaid goods for use in/for the creating of traffic route control systems; Traffic route control systems mainly consisting of steel guard rails, single or double safety fences, mobile and stationary guide walls and guard walls of concrete or concrete combined with steel, mobile and stationary impact absorbers of concrete or concrete combined with steel, in particular finished concrete parts and protection systems consisting thereof; energy-absorbing end structures on protective devices, including protective walls and crash barriers; junctions and connectors for passive protective devices for roads; all of the aforesaid goods consisting wholly or predominantly of concrete; including the aforesaid goods for use in/for the creating of traffic route control systems; Construction drafting and architectural consultancy in the field of road and traffic route safety engineering
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.
Similarity of the Marks
U.S. Registration Nos. 1085885, 1085886, 2695815, 3206728, 4428271, and 4244960- In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, 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)-(b)(v).
In the present case, applicant’s mark is SPS and registrants’ mark is SPS. Thus, the marks are identical in terms of appearance and sound. In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrants’ respective goods and/or services.
Therefore, these marks are confusingly similar.
U.S. Registration Nos. 2697891, 2808775 and 2697891- The respective marks are virtually identical. All of the marks contain the identical acronym SPS. The marks in U.S. Registration Nos. 2697891, 2808775 and 2697891 have also added a design element. Although marks must be compared in their entireties, the word portion generally may be the dominant and most significant feature of a mark because consumers will request the goods and/or services using the wording. See In re Viterra Inc., 671 F.3d 1358, 1362, 1366, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012); In re Davia, 110 USPQ2d 1810, 1813 (TTAB 2014). For this reason, greater weight is often given to the word portion of marks when determining whether marks are confusingly similar. Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii).
The average purchaser’s recollection of requesting the goods and/or services by the identical acronym SPS will confuse people into believing that the goods and services come from a common source. When comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Davia, 110 USPQ2d 1810, 1813 (TTAB 2014); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049, (TTAB 2014); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); TMEP §1207.01(b). Thus these marks are confusingly similar.
Similarity of the Goods and Services
Applicant’s goods and services are traffic route control systems mainly consisting of steel guard rails, single or double safety fences, mobile and stationary guide walls and guard walls of steel or steel combined with concrete, mobile and stationary impact absorbers of steel or steel combined with concrete, in particular finished steel parts and protection systems consisting thereof; energy-absorbing arch heads, including being parts of steel guard rails for traffic routes, end-constructions for protective devices, including guard walls and guard rails; junctions and connectors for passive protective devices for roads; all of the aforesaid goods consisting wholly or predominantly of steel; anchors of steel, steel posts, including the aforesaid goods for use in/for the creating of traffic route control systems; Traffic route control systems mainly consisting of steel guard rails, single or double safety fences, mobile and stationary guide walls and guard walls of concrete or concrete combined with steel, mobile and stationary impact absorbers of concrete or concrete combined with steel, in particular finished concrete parts and protection systems consisting thereof; energy-absorbing end structures on protective devices, including protective walls and crash barriers; junctions and connectors for passive protective devices for roads; all of the aforesaid goods consisting wholly or predominantly of concrete; including the aforesaid goods for use in/for the creating of traffic route control systems; Construction drafting and architectural consultancy in the field of road and traffic route safety engineering
The goods for U.S. Registration Nos. 1085885 and 1085886 are metal fasteners and fastener devices-namely, nuts, bolts, screws, pins, plugs and collars. The services for U.S. Registration Nos. 2695815, 2697891 and 2808775 are data collection services, namely obtaining, evaluating, and analyzing data in the field of engineering and equipment reliability; and consulting services in the field of engineering and equipment reliability. The services for U.S. Registration No. 3206728 are application service provider, namely, hosting software applications and providing non-downloadable software to others relating to the delivery and management of capital assets, design management, production management, supply chain management, fabrication, value stream management, and management of logistics and final assembly in the construction, fixed position manufacturing and logistics management fields; consulting services relating to software application configuration and organizational development in the construction, fixed positions manufacturing and logistics management fields. The services for U.S. Registration Nos. 4428271 and 4428274 are providing temporary use of on-line non-downloadable software for use in data collection in the field of engineering and equipment reliability. The services for U.S. Registration No. 4244960 are engineering and systems engineering services in the fields of three dimensional computer modeling and simulation for use in military operations, project management, logistical support services, inventory control, fielding new government weapons and equipment, and acquisition and lifecycle management of software-intensive systems; software engineering 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).
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 registrations 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, with respect to U.S. Registration Nos. 1085885 and 1085886 the application uses broad wording to describe the goods and this wording is presumed to encompass all goods and services of the type described, including those in registrant’s more narrow identification. Accordingly, applicant’s drafting and architectural consultancy and traffic route control systems consisting of various parts could encompass the use of registrant’s metal fasteners and fastener devices.
Similarly with respect to U.S. Registration Nos. 2695815, 2697891, 2808775, 3206728, 4428271, 4428274, and 4244960 the registrations use broad wording to describe the services and this wording is presumed to encompass all goods and/or services of the type described, including those in applicant’s more narrow identification. Accordingly, registrants’ data collection services, namely obtaining, evaluating, and analyzing data in the field of engineering and equipment reliability; and consulting services in the field of engineering and equipment reliability; application service provider, namely, hosting software applications and providing non-downloadable software to others relating to the delivery and management of capital assets, design management, production management, supply chain management, fabrication, value stream management, and management of logistics and final assembly in the construction, fixed position manufacturing and logistics management fields; consulting services relating to software application configuration and organizational development in the construction, fixed positions manufacturing and logistics management fields; providing temporary use of on-line non-downloadable software for use in data collection in the field of engineering and equipment reliability; and engineering and systems engineering services in the fields of three dimensional computer modeling and simulation for use in military operations, project management, logistical support services, inventory control, fielding new government weapons and equipment, and acquisition and lifecycle management of software-intensive systems; software engineering services, could all encompass providing applicant’s traffic route control systems consisting of various parts and drafting and architectural consultancy.
In total the marks are identical or virtually identical and the goods and/or services are related. Therefore, consumers are likely to be confused and mistakenly believe that the goods and/or services come from a common source. Accordingly, registration is refused under Section 2(d) of the Trademark Act.
FOREIGN REGISTRATION REQUIRED
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must 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. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 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 is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
IDENTIFICATION OF GOODS AND SERVICES
The identification of services in International Class 042 is acceptable as written. The identification of goods in International Classes 006 and 019 is indefinite and must be clarified because it is too broad and could include goods in other international classes. See TMEP §1402.01 §1402.03.
Applicant should note that the wording in bold ALL CAPS below shows the changes being proposed for the identification of goods and services. Items with a strike through are to be deleted (e.g., toilet). When making its amendments, applicant should enter them
in standard font, not bold ALL CAPS or with a strike through.
Applicant may adopt the following identification and classification of goods and/or services, if accurate:
International Class 006: Traffic route control systems mainly consisting of steel guard rails, single or double STEEL safety fences, mobile and stationary STEEL guide walls and guard walls of steel or PRIMARILY steel combined with concrete, mobile and
stationary impact absorbers of steel or steel combined with concrete, in particular finished steel parts and protection systems consisting thereof; energy-absorbing STEEL arch
heads, including NAMELY, being parts of steel guard rails for traffic routes, end-constructions for protective devices, including STEEL guard walls and STEEL guard rails; STEEL junctions and STEEL connectors for passive protective devices for
roads;, all of the aforesaid goods consisting wholly or predominantly of steel; anchors of steel, steel posts, including the aforesaid goods
for use in/for the creating of traffic route control systems
International Class 019: Traffic route control systems mainly consisting of steel guard rails, [this would be in International Class 006- see above] single or double NON-METAL safety fences, mobile and stationary NON-METAL guide walls and
guard walls PRIMARILY of concrete or PRIMARILY concrete combined with steel, mobile and stationary impact absorbers of concrete or concrete combined with
steel, in particular finished concrete parts and protection systems consisting thereof; NON-METAL energy-absorbing end structures on protective devices, including NAMELY, CONCRETE protective walls and CONCRETE crash barriers; CONCRETE junctions and connectors for
passive protective devices for roads;, all of the aforesaid goods consisting wholly or predominantly of concrete; including the aforesaid
goods for use in/for the creating of traffic route control systems
International Class 042: Construction drafting and architectural consultancy in the field of road and traffic route safety engineering
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.
/Shavell McPherson-Rayburn/
Shavell McPherson-Rayburn
Examining Attorney
Law Office 105
571-272-6121
Shavell.mcpherson-rayburn@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.