To: | Illinois Tool Works Inc. (blc@pattishall.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87103713 - INTENSE - 02457-91-164 |
Sent: | 9/11/2017 1:10:45 PM |
Sent As: | ECOM121@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87103713
MARK: INTENSE
|
|
CORRESPONDENT ADDRESS: PATTISHALL, MCAULIFFE, NEWBURY, HILLIARD |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Illinois Tool Works Inc.
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 9/11/2017
On February 01, 2017, action on this application was suspended pending the disposition of U.S. Application Serial No. 87075442. The referenced prior-pending application has since registered. Therefore, registration is refused as follows.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is INTENSE presented in standard character form for use with the following applied-for goods:
Class 003: Automobile tire and wheel cleaning preparations, namely, tire cleaners, wheel cleaners, spray-on liquid shine preparation for tires and liquid gel shine preparation for tires; detergents and cleaners for automobiles; automobile waxes; automobile interior polishes and cleaners
Registrant’s mark is Y YNTENSE presented in special form with a design element for use with the following goods:
Class 003: cleaning preparations; preparations for cleaning, maintaining, polishing, protecting and removing stains from leather, leather surfaces, textiles, wool, hide, wood, fabric and microfiber coverings; preparations in the nature of creams for maintaining and preserving animal skins and hide; preparations for degreasing fabrics, wool, hide, wood, fabric and microfiber coverings not for use in manufacturing processes; creams, waxes, and polishes for cleaning, preserving, polishing animal skins, fabrics, wool, hide, wood, fabric and microfiber coverings; creams and polishing creams for leather and leather surfaces; stain-removing sprays; stain-removing waxes; cleansing creams, scouring powders and waxes for cleaning and repairing leather, hides and textiles; preparations for the cleaning, maintaining and care of leather and hide, namely, creams and waxes; wood cleaners, namely, creams, waxes and polishes for cleaning and polishing wood; cleaning preparations for leather; cleaning preparations for fabrics; cleaning preparations for wood; cleaning preparations for glass; cleaning preparations for textiles; leather polishes; leather preservatives; creams for leather and hide; waxes for leather and hide; automotive cleaning preparations; carpet cleaning preparations
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. 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.
Moreover, the overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Comparison of Marks
Here, applicant’s mark is INTENSE presented in standard character form and registrant’s mark is Y YNTENSE presented in special form with a design. These marks are similar for the reasons discussed below.
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).
Further, registrant’s mark consists of the literal element Y YNTENSE and a design of a two hands cupping a capital letter “Y” above the word “YNTENSE”. Although marks must be compared in their entireties, the word portion generally may be considered the dominant and most significant feature of a mark because consumers will request the goods using the wording. See Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). For this reason, greater weight is often given to the word portion of marks when determining whether marks are confusingly similar. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Moreover, in this matter, registrant’s usage of the hands and letter “Y” are positioned above the wording “YNTENSE” which visually emphasizes the significance of the literal term “YNTENSE”
Here, applicant’s mark and registrant’s mark share a vibrational spelling of the term “INTENSE” with applicant spelling the term properly and registrant spelling the term as “YNTENSE”. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Likewise, the dominant terms “INTENSE” and “YNTENSE” of each respective mark are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Accordingly, applicant’s and registrant’s marks are similar for purposes of determining likelihood of confusion under Section 2(d) of the Trademark Act.
Comparison of Goods
Here, applicant’s goods are “Automobile tire and wheel cleaning preparations, namely, tire cleaners, wheel cleaners, spray-on liquid shine preparation for tires and liquid gel shine preparation for tires; detergents and cleaners for automobiles; automobile waxes; automobile interior polishes and cleaners” and registrant’s goods are “cleaning preparations; preparations for cleaning, maintaining, polishing, protecting and removing stains from leather, leather surfaces, textiles, wool, hide, wood, fabric and microfiber coverings; preparations in the nature of creams for maintaining and preserving animal skins and hide; preparations for degreasing fabrics, wool, hide, wood, fabric and microfiber coverings not for use in manufacturing processes; creams, waxes, and polishes for cleaning, preserving, polishing animal skins, fabrics, wool, hide, wood, fabric and microfiber coverings; creams and polishing creams for leather and leather surfaces; stain-removing sprays; stain-removing waxes; cleansing creams, scouring powders and waxes for cleaning and repairing leather, hides and textiles; preparations for the cleaning, maintaining and care of leather and hide, namely, creams and waxes; wood cleaners, namely, creams, waxes and polishes for cleaning and polishing wood; cleaning preparations for leather; cleaning preparations for fabrics; cleaning preparations for wood; cleaning preparations for glass; cleaning preparations for textiles; leather polishes; leather preservatives; creams for leather and hide; waxes for leather and hide; automotive cleaning preparations; carpet cleaning preparations” (emphasis added).
The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] 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).
Indeed, applicant’s and registrant’s goods are both automotive cleaning preparations and have narrow and broad identification of goods that encompass each other. With respect to applicant’s and registrant’s goods, the question of likelihood of confusion is determined based on the description of the goods 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)).
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 “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)).
In particular, registration uses broad wording to describe the goods and this wording is presumed to encompass all goods of the type described, including those in applicant’s more narrow identification. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000). Indeed, registrant’s wording of “automotive cleaning preparations” and “cleaning preparations” are so broad that this wording encompasses all of applicant’s automotive “tire” “wheel” and “interior” preparations and “waxes”.
Further, the application also uses broad wording of “detergents and cleaners for automobiles” “automobile waxes; automobile interior polishes and cleanrs” to describe the goods and this wording is presumed to encompass all goods of the type described, including those in registrant’s more narrow identification of goods that indicate the specific usage of these goods for “cleaning” and “polishing” “fabrics” “leather and hide” “wood” “wool” “microfiber coverings” etc. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).
Thus, applicant’s and registrant’s goods are highly related because both identification of goods indicate that the goods are all used for the same purpose, namely, as automotive cleaning goods for various surfaces and parts of the automobile.
Accordingly, applicant’s and registrant’s goods are highly related for purposes of determining likelihood of confusion under Section 2(d) of the Trademark Act.
RESPONSE GUIDELINES
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. §§2.62(c), 2.191; TMEP §§304.01-.02, 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.
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 $125 per class of goods. 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 or e-mail without incurring this additional fee.
/Courtney M. Caliendo/
Courtney M. Caliendo
Examining Attorney
Law Office 121
571-270-1871
courtney.caliendo@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.