To: | Zircon Corporation (amy.gee@zircon.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 87867002 - ZIRCON - N/A |
Sent: | 7/31/2018 2:29:22 PM |
Sent As: | ECOM104@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. 87867002
MARK: ZIRCON
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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: Zircon Corporation
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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: 7/31/2018
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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4035924. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
In the present case, the applicant seeks registration of ZIRCON in standard character form for “Electronic and battery-operated sensing and detecting equipment, measurement tools and measurement instruments, electric measuring devices, measures, metal detectors, electrical wiring detectors, moisture detectors, utility detectors; sensing and detecting tools, namely, measures, water sensors, electrical current detectors, electronic water-leak sensing devices utilizing radio frequencies for providing user alerts; tools to locate objects behind solid surfaces and within solid materials; and software for sensing and communicating sold with all of the foregoing” in Class 9.
The cited registered mark is ZIRCON in standard character form for “test instruments for acquiring and processing ultrasound signals in non-destructive testing” in Class 9.
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 of the applicant and registrant. 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.” 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
In the present case, applicant’s mark is ZIRCON in standard character form and registrant’s mark is ZIRCON in standard character form. These 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 they are identical, 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. Id.
Therefore, the marks are confusingly similar.
Relatedness of the Goods
In this case, applicant’s mark is ZIRCON in standard character form for “Electronic and battery-operated sensing and detecting equipment, measurement tools and measurement instruments, electric measuring devices, measures, metal detectors, electrical wiring detectors, moisture detectors, utility detectors; sensing and detecting tools, namely, measures, water sensors, electrical current detectors, electronic water-leak sensing devices utilizing radio frequencies for providing user alerts; tools to locate objects behind solid surfaces and within solid materials; and software for sensing and communicating sold with all of the foregoing” in Class 9.
The cited registered mark is ZIRCON in standard character form for “test instruments for acquiring and processing ultrasound signals in non-destructive testing” in Class 9.
The application uses broad wording to describe “Electronic and battery-operated sensing and detecting equipment, measurement tools and measurement instruments, electric measuring devices, measures, metal detectors, electrical wiring detectors, moisture detectors, utility detectors; sensing and detecting tools, namely, measures, water sensors, electrical current detectors, electronic water-leak sensing devices utilizing radio frequencies for providing user alerts; tools to locate objects behind solid surfaces and within solid materials” in Class 9, which presumably encompasses all goods of the type described, including registrant’s more narrow “test instruments for acquiring and processing ultrasound signals in non-destructive testing” in Class 9. 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). Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)).
Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on 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)).
Thus, upon encountering ZIRCON for sensing, measuring, detecting tools, equipment, and devices, and ZIRCON for test instruments, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source. As such, registration must be refused under Trademark Act Section 2(d).
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).
Applicant may substitute the following wording, if accurate: “measuring tapes” or “tape measures” in Class 9, or “devices for measuring blood sugar” or “devices for measuring intracranial pressure” in Class 10.
Further, the following suggested identification contains further guidance in bold and/or brackets. Applicant may adopt any or all of the suggestions in bold and/or brackets so long as they are accurate. Applicant should note that the brackets indicate where applicant must insert specific types of goods. The braces should NOT appear in the amended identification; only the specific goods inserted by applicant. Applicant need not amend identifications other than where specified.
Class 9: Electronic and battery-operated sensing and detecting equipment in the nature of [further specify common commercial name of goods, e.g., stud finders], measurement tools and measurement instruments in the nature of [further specify common commercial name of goods, e.g., instruments for measuring length], electric measuring devices in the nature of [further specify common commercial name of goods, e.g., measuring tape], measures in the nature of [further specify common commercial name of goods, e.g., tape measures], metal detectors, electrical wiring detectors in the nature of [further specify common commercial name of goods, e.g., clamp meters for measuring electricity], moisture detectors in the nature of further specify common commercial name of goods, e.g., concentration meters], utility detectors in the nature of further specify common commercial name of goods, e.g., cable locators]; sensing and detecting tools, namely, measures in the nature of [further specify common commercial name of goods, e.g., tape measures], water sensors in the nature of [further specify common commercial name of goods, e.g., sensors for measuring concentrations of chemicals in water], electrical current detectors in the nature of [further specify common commercial name of goods, e.g., pulse generators for testing electric current], electronic water-leak sensing devices for [specify use, e.g., vacuum pumps] utilizing radio frequencies for providing user alerts; tools to locate objects behind solid surfaces and within solid materials in the nature of [further specify common commercial name of goods, e.g., magnetic stud finders]; and software for sensing [further specify what is being sensed, e.g., wall studs] and communicating [further specify communication, e.g., with users of hand-held computers] sold with all of the foregoing.
Class 10: electric measuring devices for measuring blood sugar; measures in the nature of devices for measuring intracranial pressure.
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods based on use in commerce that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class 9; and applicant needs a specimen for class 10. See more information about specimens.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
QUESTIONS
/Andrew Crowder-Schaefer/
Trademark Examining Attorney
Law Office 104
(571) 272-0087
andrew.crowderschaefer@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.