To: | Microban Products Company (rebecca.conner@microban.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87155620 - AEGIS - AEG.20160007 |
Sent: | 9/19/2016 9:07:22 PM |
Sent As: | ECOM118@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87155620
MARK: AEGIS
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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: Microban Products Company
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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.
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 that Applicant Must Address
(1) Refusal under Trademark Act Section 2(d) – Likelihood of Confusion;
(2) Requirement to Amend Mark Description;
(3) Requirement to Amend Color Claim Statement; and
(4) Requirement to Amend Recitation of Services
Initially, the examiner notes that applicant’s Preliminary Amendment filed September 19, 2016 containing a substitute drawing showing the applied-for mark in a horizontal position and a verified claim of ownership of U.S. Registration Nos. 3015383, 4912957, 4986639 and others has been noted and made of record.
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. 4077754 and 4212791. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
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 services of the applicant and registrants. 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, 177 USPQ 563 (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 services, and similarity of the trade channels of the 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.
A. Comparison of Services
Applicant’s “engineering and consulting services . . .” are identical to the registrants’ “design and engineering in the field of . . . manufacturing processes and methods, vehicles and natural and artificial objects” and “consulting services in the fields of engineering” because they are engineering services in the fields of product manufacturing, structures and vehicles and consultation related thereto and are likely to travel through the same channels of trade to the same class of purchasers. For example, the services are likely to be advertised together in engineering and product design services provider directories and trade publications.
Furthermore, with respect to applicant’s and registrants’ services, the question of likelihood of confusion is determined based on the description of the services stated in the application and registrations at issue, not on extrinsic evidence of actual use. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-70, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); 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 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 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 have no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these services travel in all normal channels of trade, and are available to the same class of purchasers.
Further, the registrations use broad wording to describe the services and this wording is presumed to encompass all services of the type described including design and engineering in the fields of manufacturing professional and consumer goods featuring antimicrobial treatments, manufacturing textiles and polymers featuring chemical treatments and finishing agents, design and engineering in the field of antimicrobial and antifungal treatments for buildings and automobiles and consulting services in the field of engineering antimicrobial treatments for manufacturing a wide variety of professional and consumer goods, chemical treatments and finishing agents for textiles and polymers and antimicrobial and antifungal treatments for buildings and automobiles, which are identical to applicant’s services.
B. Comparison of Marks
Applicant’s mark AEGIS is also highly similar to the registered marks AEGIS-VIEW and AGEISS INC. in sound, appearance and commercial impression.
Regarding the first cited registration, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751.
In the present case, the word “AEGIS” in the registered mark is identical to the word “AEGIS” in the proposed mark. This word also comprises the dominant portion of the registered mark as consumers are generally more inclined to focus on the first word, prefix or syllable in any 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). As such, the respective marks create similar overall commercial impressions.
Furthermore, with regard to the common terms “AEGIS” in the marks, marks are 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).
As for the second cited registration, the only practical difference between the marks is the silent lettering “E” and “E” in the middle of the marks and the additional silent letter “S” at the end of the registered mark. However, minor changes in words (e.g. phonetic substitution) are insufficient to distinguish marks. Therefore, this minor difference does not alter the commercial impressions of the marks sufficiently to obviate the likelihood of confusion.
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). Moreover, the generic business designation “INC.” in the registered mark has no source-indicating/service mark significance. See the attached sample Internet printout.
Furthermore, although the applied-for mark contains a design element, the word portion is 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 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)).
What’s more, where the services of an applicant and registrants are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
Finally, the overriding concern is not only to prevent buyer confusion as to the source of the services, but to protect the registrants 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 registrants. 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, 1025 (Fed. Cir. 1988).
Based on the foregoing remarks, because confusion as to source is likely, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.
Applicant should also note the following potential refusal.
Prior Pending Application
The filing date of pending Application Serial No. 79184468 precedes applicant’s filing date. See attached referenced application. If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Although applicant’s mark has been refused registration, applicant may respond to the refusal and potential refusal by submitting evidence and arguments in support of registration.
If applicant responds to the refusal and potential refusal, applicant must also respond to the requirements set forth below.
Applicant must revise the mark description of record by more accurately describing the literal and design elements and color location in the proposed mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. The following is suggested, if accurate:
The mark consists of the “AEGIS” in dark blue stylized font and a fanciful star design featuring four points shown in the colors dark blue, light blue and orange.
In light of the mark description above, the color claim statement of record should be amended by using the following format: “The colors dark blue, light blue and orange are claimed features of the mark.” 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)(i). Common color names should be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(ii).
The wording “consulting services for the custom design of . . .” in the identification of services is indefinite and must be clarified. See TMEP §1402.01. Applicant must amend this wording by clarifying the nature of the services intended to be associated with the applied-for mark, as set forth below.
The applicant may adopt any or all of the following descriptions, if accurate:
“Engineering and consulting in the field of custom designing antimicrobial preparations used in manufacturing a wide variety of professional and consumer goods, including professional and consumer goods made of polymers, textiles and ceramics; engineering and consulting in the field of custom designing chemical preparations and finishing preparations for textiles and polymers; engineering and consulting in the field of custom designing antimicrobial and antifungal preparations for buildings and automobiles”, in International Class 42.
TMEP §1402.11.
This description is identical to the recitation adopted by applicant in connection with approved application Serial No. 87155449 covering the mark MICROBAN & Design.
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.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07. Furthermore, any services deleted by amendment may not be reinserted at a later point in prosecution. TMEP §1402.01(e).
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
Advisory Regarding E-mail Communications
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.
/David Yontef/
Trademark Attorney Advisor
Law Office 118
(571) 272-8274
david.yontef@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.