To: | Carlisle Fluid Technologies, Inc. (mail-cfti@fyiplaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87599444 - NEPTUNE - CFTI:0393TRA |
Sent: | 12/15/2017 11:56:40 AM |
Sent As: | ECOM116@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 87599444
MARK: NEPTUNE
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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: Carlisle Fluid Technologies, Inc.
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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: 12/15/2017
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 the Applicant Must Address
1) Registration is Refused Under Section 2(d) Due to Likelihood of Confusion
2) Amended Identification of Goods is Required
3) Requirements for a Multiple-Class Application
REGISTRATION IS REFUSED UNDER SECTION 2(d) DUE TO LIKELIHOOD OF CONFUSION
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.
The applicant’s mark this case is NEPTUNE. It is identical to the registered marks in U.S. Registration Nos. 3173268 and 4794443.
The applicant intends to use its mark on “SPRAY GUNS FOR PAINT; PUMPS; COMPRESSED AIR GUNS FOR THE EXTRUSION OF MASTICS; GLUE GUNS; ELECTROSTATIC COATING APPARATUS AND PARTS THEREOF AND ATTACHMENTS AND ACCESSORIES FOR USE THEREWITH, NAMELY, SPRAY COATING APPARATUS; HIGH VOLTAGE SUPPLY UNITS; ELECTRICAL CONTROLS FOR ELECTROSTATIC COATING APPARATUS; HIGH VOLTAGE ELECTRODES FOR SPRAY COATING SYSTEMS AND ELECTROSTATIC ATOMIZING APPARATUS.”
The registrant in U.S. Registration No. 3173268 is using its mark on “PUMPING SYSTEM FOR FIGHTING FIRES COMPRISED OF SUCTION PUMPS AND ELECTRICAL WATER PUMPS.” The parties’ goods are related in that they include “pumps”. The broad and undefined scope of the applicant’s “pumps” reasonably includes the pumps identified by the registrant. Given the identicalness of the parties’ marks and the relatedness of the parties’ goods, purchasers could mistakenly believe that the parties’ goods come from a common source.
The registrant in U.S. Registration No. 4794443 is using its mark on “marine paint.” The applicant’s “spray guns for paint” are related to the registrant’s paint in that the spray guns are used for applying paint to surfaces. Purchasers of the parties’ goods could reasonably believe that the parties’ goods come from a common source since the goods bear the same identical trademark.
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).
AMENDED IDENTIFICATION OF GOODS IS REQUIRED
The wording “spray coating apparatus” in the identification of goods is indefinite and must be clarified because it is unclear if these goods are “powered” or hand operated. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The applicant may identify these goods as “powder coating spray guns.”
The applicant may adopt the following amended identification of goods, if accurate:
International Class 7: Spray guns for paint; circulating pumps; compressed air guns for the extrusion of mastics; electric glue guns; electrostatic coating machines and parts thereof and attachments and accessories for use therewith, namely, powder coating spray guns; high voltage supply generators; high voltage electrodes for spray coating machines and electrostatic atomizing machines.
International Class 9: Electrical controls for electrostatic coating apparatus.
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. See TMEP §1402.04.
REQUIREMENTS FOR A MULTIPLE-CLASS APPLICATION
(1) List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
ASSISTANCE
RESPONSE TO OFFICE ACTION
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and e-mail technical questions to TEAS@uspto.gov.
/Tina L. Snapp/
Examining Attorney
Law Office 116
571-272-9224
Tina.snapp@uspto.gov(Informal E-mails Only)
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.