To: | Neal Technologies, Inc. (tgwynne@whitakerchalk.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88041096 - BULLETPROOF - 26611.041 |
Sent: | 11/5/2018 11:36:23 AM |
Sent As: | ECOM123@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 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88041096
MARK: BULLETPROOF
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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: Neal 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.
INTRODUCTION
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined 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) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods. See 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)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Applicant's mark is "BULLETPROOF" for "automotive components, namely, oil coolers and exhaust gas recirculation coolers for diesel engines; oil filtration systems comprised of filters for diesel engines; water pumps for diesel engines; and fuel injection control modules for diesel engines; thermostats for diesel engines" in International Class 7.
Already registered is the mark "BULLETPROOF" for "Molded polyurethane parts for engine mounts for land vehicles; Steering and suspension systems and parts for steering and suspension systems for vehicles, namely, upper ball joints, lower ball joints, ball joints with control arms, bushing kits, inner tie rod ends, outer tie rod ends, sleeves, idler arms, center links, stabilizer kits, inner sockets and pitman arms" in International Class 12.
Similarity of the Marks
The respective marks, "BULLETPROOF" and "BULLETPROOF", are confusingly similar, as set forth below.
In the present case, applicant’s mark is "BULLETPROOF" and registrant’s mark is "BULLETPROOF". 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 and create the same overall commercial impression.
Similarity of the Goods
Applicant seeks registration of its mark for "automotive components, namely, oil coolers and exhaust gas recirculation coolers for diesel engines; oil filtration systems comprised of filters for diesel engines; water pumps for diesel engines; and fuel injection control modules for diesel engines; thermostats for diesel engines".
The goods identified in the cited registration are "Molded polyurethane parts for engine mounts for land vehicles; Steering and suspension systems and parts for steering and suspension systems for vehicles, namely, upper ball joints, lower ball joints, ball joints with control arms, bushing kits, inner tie rod ends, outer tie rod ends, sleeves, idler arms, center links, stabilizer kits, inner sockets and pitman arms".
Applicant’s goods are closely related to registrant’s goods as set forth below.
The evidence of record demonstrates that applicant's and registrant's automotive parts are commonly offered together by automotive part manufacturers under the same mark and through the same trade channels to the same type of consumers. Specifically, the attached Internet evidence consists of excerpted website printouts from automotive part manufacturers. See attached excerpts from http://www.acdelco.com/, http://www.boschautoparts.com/, http://www.autozone.com/, and http://www.napaonline.com/. For example, in the attached website from AC Delco, the auto part manufacturer provides engine thermostats, water pumps, oil filters, and a variety of parts for steering systems. See attached website excerpts. Similarly, Bosch offers oil filters, engine thermostats, and several steering system components. See attached website excerpts from http://www.boschautoparts.com/. The attached Internet evidence, establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Thus, applicant's goods are closely related to registrant's goods for likelihood of confusion purposes.
Therefore, upon encountering "BULLETPROOF" used for "automotive components, namely, oil coolers and exhaust gas recirculation coolers for diesel engines; oil filtration systems comprised of filters for diesel engines; water pumps for diesel engines; and fuel injection control modules for diesel engines; thermostats for diesel engines", and "BULLETPROOF" used for "Molded polyurethane parts for engine mounts for land vehicles; Steering and suspension systems and parts for steering and suspension systems for vehicles, namely, upper ball joints, lower ball joints, ball joints with control arms, bushing kits, inner tie rod ends, outer tie rod ends, sleeves, idler arms, center links, stabilizer kits, inner sockets and pitman arms", consumers are likely to be confused as to the source of the goods .
Applicant should note the following additional ground for refusal.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes a quality or characteristic of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
Specifically, applicant has applied to register the mark "BULLETPROOF" for "Automotive components, namely, oil coolers and exhaust gas recirculation coolers for diesel engines; oil filtration systems comprised of filters for diesel engines; water pumps for diesel engines; and fuel injection control modules for diesel engines; thermostats for diesel engines" in Class 7. The mark merely describes a quality or characteristic of applicant's goods, namely, automotive parts that are very reliable or durable.
The American Heritage Dictionary defines applicant's mark, "BULLETPROOF", as "impervious to assault, damage, or failure; guaranteed". See attached definition. Third parties often use "BULLETPROOF" in applicant's industry to describe automotive components that are extremely durable or capable of withstanding severe service or abuse. See attached website excerpts from http://www.bobistheoilguy.com/, http://bulletproofautomotive.com/, http://gbodyforum.com/, http://www.amazon.com/, http://www.hotrod.com/, http://www.motortrend.com/, and http://boards.straightdope.com/. Applicant is providing durable automotive components.
Therefore the mark "BULLETPROOF" as applied to the relevant goods, merely describes a quality or characteristic of applicant's goods, namely, automotive parts that are very reliable or durable. Accordingly, the proposed mark is merely descriptive, and registration is refused on the Principal Register under Section 2(e)(1).
SUPPLEMENTAL REGISTER (ADVISORY)
Applicant may substitute the following wording, if accurate, with suggested amendments in bold:
Class 7: Automotive components, namely, oil coolers and exhaust gas recirculation coolers for diesel engines; oil filtration systems comprised of filters for diesel engines; water pumps for diesel engines; fuel injection control modules for diesel engines
Class 9: Thermostats for vehicles, namely, thermostats for diesel engines
For assistance with identifying and classifying goods 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 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 fee 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 two classes; however, applicant submitted a fee sufficient for only one 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 7; and applicant needs a specimen for class 9. See more information about specimens.
Examples of specimens for goods include tags, labels, instruction manuals, containers, and photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.
(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.
RESPONSE GUIDELINES
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.
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.
If applicant has any questions or requires assistance in responding to this Office Action, please telephone the assigned examining attorney.
Matthew Howell
/Matthew Howell/
Examining Attorney
Trademark Law Office 123
(571)270-0992
matthew.howell@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.