UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87429083
MARK: CALIBER
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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: Whitmore Manufacturing, LLC
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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. 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: 2/23/2018
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on January 31, 2018 (the “Response”).
In a previous Office action dated July 31, 2017, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was advised that a mark in a prior-filed pending application could be the basis of an additional Section 2(d) refusal if the mark in the prior-filed pending application registers. The mark in the referenced prior-filed pending application has registered. However, the trademark examining attorney has withdrawn the advisory as it relates to such mark.
The trademark examining attorney has reviewed applicant’s Response and is not persuaded by applicant’s arguments that a likelihood of confusion does not exists between the applied-for and registered marks. Thus, the trademark examining attorney maintains and now makes FINAL the refusal under Trademark Act Section 2(d) for the reasons stated below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 2088071. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
Registration of the applied-for mark was refused because of a likelihood of confusion with the mark in U.S. Registration No. 2088071. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant(s). See 15 U.S.C. §1052(d). Determining likelihood of confusion is made on a case-by-case basis by applying 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). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].” In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); see TMEP §1207.01.
Comparison of the Marks
Applicant’s mark is CALIBER in standard character form owned by Whitmore Manufacturing, LLC.
Registrant’s mark is CALIBER & Design, owned by Sapphire Scientific, Inc.
Applicant does not dispute that the marks are confusingly similar.
The applied-for and registered marks are similar in appearance, sound, meaning and overall commercial impression. Applicant’s and registrant’s marks are confusingly similar because the wording in the marks are identical.
In the present case, applicant’s mark is CALIBER and registrant’s mark is CALIBER & Design. Thus, the word portion of the marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because of the identical nature of the marks, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
The addition of the design element in the registered mark does not obviate a likelihood of confusion. This is because when evaluating a composite mark containing both words and designs, the word portion is more likely to indicate the origin of the goods and/or services because it is that portion of the mark that consumers use when referring to or requesting the goods and/or services. 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). Thus, although 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 1366-67, 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)).
Because the wording in the applied-for and registered marks are identical, the marks are similar in appearance, sound, meaning, and overall commercial impression. Accordingly, the marks are confusingly similar.
Comparison of the Goods
Applicant’s goods are “industrial greases” in International Class 004.
Registrant’s goods include the following:
Class 1: industrial and commercial janitorial chemicals for use in cleaning solutions.
Class 3: all-purpose concentrated cleaning preparations; hard floor cleaning, stripping and finishing preparations; carpet cleaning preparations; all-purpose cleaning preparations; degreasing preparations for use on carpets, draperies, upholstery; and, carpet, drapery and upholstery cleaners with deodorizers.
Applicant’s industrial greases and registrant’s cleaning products are related because it is common for the same entity to manufacture both parties’ goods and market the goods under the same mark.
Applicant argues that it is irrelevant whether the same entity manufactures and markets both parties’ goods under the same mark because the issue is whether registrant’s mark and applicant’s mark would travel in the same channels of trade. Applicant further argues that the goods are not related because the purpose of the goods are contradictory. However, the fact that an entity sells various goods under a single mark, even if such goods may have alternative purposes, suggests that these goods are used in the same channels of trade and related to one another. In the present case, both parties’ goods are used by consumers that do business that is industrial in nature. Such consumers use applicant’s goods to lubricate various types of industrial equipment and machinery. The same entities also use cleaning preparations to clean machinery, equipment, and industrial work areas. Thus, the goods would be purchased by the same class of purchasers and encountered under circumstances that would cause one to mistakenly believe the goods emanate from the same source.
Additionally, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a representative sample 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 industrial greases and cleaning products and preparations, 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).
The examining attorney takes note of applicant’s statement that registrant is affiliated with Legends Brands Cleaning, a company that manufactures goods and provides services related to floor cleaning. The examining attorney also takes note that several of registrant’s goods are related to floor cleaning. However, the registration is owned by Sapphire Scientific, Inc., not Legends Brands Cleaning. Thus, the fact that Legends Brands Cleaning goods and services are related to floor cleaning is irrelevant for assessing whether a likelihood of confusion exists between applicant’s and registrant’s mark. Moreover, registrant’s affiliation, if any, with Legends Brands Cleaning does not overcome this refusal under Section 2(d) because applicant has not submitted any evidence to the record to support such statements. Instead, with the exception of screenshots of products sold on Legend Brand’s Cleaning’s websites, applicant has only provided web addresses and/or hyperlinks as evidence against the refusal. However, providing only a web address and/or hyperlink to Internet materials is not sufficient to introduce it into the record. In re Olin, 124 USPQ2d 1327, 1331 n.15 (TTAB 2017) (citing In re Powermat Inc., 105 USPQ2d 1789, 1791 (TTAB 2013); In re HSB Solomon Assocs., LLC, 102 USPQ2d 1269, 1274 (TTAB 2012)); TBMP §1208.03; TMEP §710.01(b). Accordingly, the underlying webpages associated with these addresses and/or links will not be considered.
Website evidence referenced by a web address or hyperlink can be changed or deleted and may not be available to a party attempting to corroborate or refute such evidence at a later date. See In re Olin, 124 USPQ2d at 1331 n.15; In re HSB Solomon Assocs., LLC, 102 USPQ2d at 1274. To introduce Internet materials into the record, an applicant must provide (1) an image file or printout of the downloaded webpage, (2) the date the evidence was downloaded or accessed from the Internet, and (3) the complete URL address of the webpage. TBMP §1208.03; see TMEP §710.01(b) (citing Safer Inc. v. OMS Invs. Inc., 94 USPQ2d 1031, 1039 (TTAB 2010)).
Furthermore, the registration contains goods that are not limited to being used for floor cleaning purposes. For example, “all purpose concentrated cleaning preparations” and “all purpose cleaning preparations” in the registration are goods that could be used for a variety of purposes, including cleaning industrial machinery, equipment, and work areas. Thus, registrant’s goods travel in the same channel of trades as applicant’s industrial greases.
Thus, evidence and arguments that constitute a collateral attack on a cited registration, such as information or statements regarding a registrant’s nonuse of its mark, are not relevant during ex parte prosecution. See In re Dixie Rests., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); TMEP §1207.01(d)(iv). Such evidence and arguments may, however, be pertinent to a formal proceeding before the Trademark Trial and Appeal Board to cancel the cited registration.
Therefore, upon encountering CALIBER and CALIBER & Design used on the identified goods, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source.
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, 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).
Accordingly, registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2088071. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
RESPONSE GUIDELINES
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
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 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 or e-mail without incurring this additional fee.
/Dean A. Hopkins II/
Examining Attorney
Law Office 123
(571) 272-5472
dean.hopkins@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.