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: 11/19/2015

 

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.

 

SUMMARY OF ISSUES that applicant must address:

 

• Section 2(d) Refusal – Likelihood of Confusion
• Identification of Goods
• Specimen Not Acceptable
• Request for Information

 

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. 1858361, 1857482, 1902743, and 1859732.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Applicant has applied to register PT (in standard character form) for “Metal pipes and tubes, including elbows, for industrial use; namely, steel alloy pipes; titanium alloy pipes; metal pipes for drainage; metal pipes for the transfer of liquids and gases; pipes and ducts for HVAC installations; nickel alloy tubes; stainless steel tubes; copper alloy tubes” in International Class 6. 

 

The registered mark in Registration No. 1858361 is PT (with design) for goods including metallic fittings, namely, elbows for hose and pipe in International Class 6.

 

The registered mark in Registration No. 1857482 is PT (in standard character form) for goods including metallic fittings, namely, elbows for hose and pipe in International Class 6.

 

The registered mark in Registration No. 1902743 is PT (in standard character form) for “plastic, polymer, nylon, and polypropylene fittings; namely, adapters, couplers, cam and groove couplers, elbows, flanges, valves, nipples, and strainers, for hose, pipe, tanks, tank trucks, and tank cars” in International Class 20.

 

The registered mark in Registration No. 1859732 is PT (with design) for “plastic, polymer, nylon, and polypropylene fittings; namely, adapters, couplers, cam and groove couplers, elbows, flanges, valves, nipples, and strainers, for hose, pipe, tanks, tank trucks, and tank cars” in International Class 20.

 

All of the above cited registrations are owned by Parrish Enterprises, Ltd., a corporation in Oklahoma.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, 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).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 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 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

 

In this case, the applicant’s mark, PT, is identical in appearance, sound, and commercial impression to the registrant’s marks, PT, in Registration Nos. 1857482 and 1902743, and highly similar in appearance and identical in sound and commercial impression to the dominant element, PT, of registrant’s marks in Registration Nos. 1858361 and 1859732.  The design element in the latter mentioned registered marks is not sufficient to overcome a likelihood of confusion. 

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b). 

 

Moreover, in terms of the design element in the registered marks in Registration Nos. 1858361 and 1859732, 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 services.  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); 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)). 

 

As explained above, the word portions of the marks are highly similar in appearance and identical in sound and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case.  See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).  Accordingly, consumers are likely to mistakenly believe that the marks identify the same source.  Thus, the marks are confusingly similar.

 

Relatedness of the Goods

 

In this case, the applicant’s various metal pipes, tubes, and elbows are highly related to the registrant’s metallic fittings, namely, elbows for hose and pipe in Registration Nos. 1858361 and 1857482 and to the registrant’s various plastic, polymer, nylon, and polypropylene fittings for hose and pipe in Registration Nos. 1902743 and 1859732 because they are all used to hold, transport, or facilitate the hold and transport of substances such as liquids or gases.  Furthermore, the consumers of the goods are accustomed to encountering a single entity that provides both metal pipes and tubes and various metal and non-metal fittings, such as elbows.  Accordingly, the goods would be sold to the same class of purchasers and encountered under circumstances leading one to mistakenly believe the goods originate from the same source.

 

The goods of the parties need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

 

The respective goods 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).

 

The attached third-party websites demonstrate that entities making metal pipes and tubes also make metal and non-metal fittings, including elbows.  This evidence establishes that the same entity commonly manufactures the relevant goods and markets the goods under the same mark and that the relevant goods are sold through the same trade channels and used by the same classes of consumers.  For example, the following specialty pipe and tube companies offer metal pipes and tubes and metal and/or non-metal fittings under the same mark:

 

• Mueller Industries
• • Metal Pipes and Tubes: http://www.muellerindustries.com/products and http://www.muellerindustries.com/products/hvac-refrigeration/hvac-tube-and-pipe
  • Fittings: http://www.muellerindustries.com/products/hvac-refrigeration/metal-fittings-and-nipples and http://www.muellerindustries.com/products/hvac-refrigeration/hvac-plastic-fittings-and-nipples
• Allied Tube & Conduit
• • Metal Pipes and Tubes: http://www.atc-mechanical.com/products/
  • Fittings: http://www.alliedeg.us/pvc/pvc-elbows/ and http://www.alliedeg.us/galvanized-rigid-steel-conduit/grc-elbows/
• Parker
• • Metal Pipes and Tubes: http://ph.parker.com/us/en/hose-piping-tubing-and-t-slot-framing
  • Fittings: http://ph.parker.com/us/en/industrial-and-general-purpose-hose-fittings and http://www.parker.com/portal/site/PARKER/menuitem.c9e5838e8a4c0934704b7b10237ad1ca/?searchbox=plastic&selectCategory=ALL&vgnextfmt=EN&vgnextoid=941b13fc0fa14110VgnVCM10000032a71dacRCRD#2
• Smith-Cooper
• • Metal Pipes and Tubes: http://www.smithcooper.com/cat.php?g=73 and http://www.smithcooper.com/cat.php?g=79
  • Fittings: http://www.smithcooper.com/cat.php?g=2776
• Sheet Metal Connectors
• • Metal Pipes and Tubes: http://www.smcduct.com/spiral-pipe-and-fittings
  • Fittings: http://www.smcduct.com/spiral-pipe-and-fittings?page=1

 

Moreover, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case.  This evidence shows that the goods listed therein, namely metal pipes, tubes, and fittings, including elbows, are of a kind that may emanate from a single source under a single mark.  See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); TMEP §1207.01(d)(iii).  See Registration Nos. 4844288, 4601075, 4608311, 3831187, and 4336133.

 

Thus, the applicant’s goods and the registrant’s goods are highly related for purposes of determining the likelihood of confusion by consumers.  Given the similarity of the marks and the relatedness of the goods, applicant’s mark must be refused under Section 2(d) of the Trademark Act.

 

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 applicant responds to the refusal, applicant must also respond to the requirement(s) set forth below.

 

IDENTIFICATION AND CLASSIFICATION OF GOODS

 

The wording “metal pipes and tubes, including elbows, for industrial use” is vague, as elbows are typically considered to be a fitting or part for pipes and tubes, rather than a pipe or tube itself.  Therefore, applicant must clarify this wording to specify the particular nature of the goods.  Moreover, the wording “pipes and ducts for HVAC installations” is indefinite and must be clarified to specify that applicant is providing pipes and ducts of metal for HVAC installations.  See TMEP §1402.01.

 

Applicant may adopt the following identification and classification, if accurate: 

 

International Class 6: Metal pipes and tubes, including elbows, for industrial use; Metal elbows for pipes for industrial use; namely, steel alloy pipes; titanium alloy pipes; metal pipes for drainage; metal pipes for the transfer of liquids and gases; pipes and ducts of metal for HVAC installations; nickel alloy tubes; stainless steel tubes; copper alloy tubes

 

See TMEP §1402.01.

 

An applicant may only amend an identification to clarify or limit the goods or services, but not to add to or broaden the scope of the goods or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. 

 

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.

 

SPECIMEN NOT ACCEPTABLE

 

Registration is refused because the specimen in International Class 6 consists of advertising material and thus does not show the applied-for mark in use in commerce for the identified goods for each international class.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).  Advertising materials are generally not acceptable as specimens to show use in commerce for goods.  See In re MediaShare Corp., 43 USPQ2d 1304, 1307 (TTAB 1997); In re Schiapparelli Searle, 26 USPQ2d 1520, 1522 (TTAB 1993); TMEP §904.04(b), (c).  Specifically, applicant’s specimen of record consists of a price sheet, which is considered advertising material and is therefore not acceptable as a specimen of use for a good.

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i). 

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)  Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods identified in the application or amendment to allege use.

 

(2)  Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

REQUEST FOR INFORMATION

 

Applicant must explain whether “PT” has any meaning or significance in the industry in which the goods are manufactured, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814. 

 

Failure to respond to a request for information is an additional ground for refusing registration.  See In re Cheezwhse.com, Inc., 85 USPQ2d 1917, 1919 (TTAB 2008); In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.

 

ASSISTANCE

 

If applicant has questions about its application or this Office action, please telephone or e-mail the assigned trademark examining attorney at the telephone number below.

 

 

 

 

 

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. 

 

 

 

/Hanna Cho/

Hanna Cho

Trademark Examining Attorney

Law Office 105

(571) 270-1961

Hanna.Cho@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 11/19/2015 FOR U.S. APPLICATION SERIAL NO. 86715720

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 11/19/2015 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.