Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned.  Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

ISSUE DATE:  April 05, 2021

 

On February 15, 2020 action on this application was suspended pending disposition of cited U.S. Registration No. 3731527, for which maintenance documents were due to be filed.  See 37 C.F.R. §2.67; TMEP §716.02(e).  USPTO records indicate that the registrant has filed the required maintenance documents in a timely manner and therefore the cited mark remains alive.   Accordingly, examination is herein resumed.

 

In a previous Office action(s) dated December 11, 2018, 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 its June 11, 2019 response, applicant submitted arguments and evidence against the Section 2(d), which the trademark examining attorney has carefully considered and found unpersuasive. 

 

Therefore, for the reasons set forth below, the trademark examining attorney maintains and now makes FINAL the refusal under Section 2(d) of the Trademark Act.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

FINAL 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. 3731527.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  

 

Applicant’s mark is ISS inside a triangle design for, as amended, “Water treatment services in the nature of selecting and adding additives to water and creating a mixture as a component for addition to a manufacturing process or a mining process; Treating water by adding defoamers, polymers and flocculants to a water supply directed to an outdoor mining operation; Treating water by adding defoamers, polymers, flocculants, and pH control additives for a manufacturing process such as pulp and paper manufact” in International Class 40. 

 

Registrant’s mark is ISS inside a solid oval for, in relevant part, “Waste processing and treatment; water treating” in International Class 40.

 

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 and/or services 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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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 services.  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. 

 

The Marks Are Highly Similar

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

Applicant’s mark consists of the letters ISS inside a triangle design.

Registrant’s mark consists of the letters ISS inside a solid oval.

 

As such, the word portions of the marks are identical in sound. Similarity in sound alone may be sufficient to support a finding that the compared marks are confusingly similar.  In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007) (citing Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 732, 156 USPQ 523, 526 (C.C.P.A. 1968)); TMEP §1207.01(b)(iv). 

 

The word portions are also nearly identical in appearance because both parties’ marks consist of the identical letters ISS, either arranged in a horizontal line or with the letter “I” above “SS.”   As a result, the commercial impression of the marks is nearly identical.  When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

The marks are different to the extent that they include different design elements.  Specifically, applicant’s mark includes a triangle design and registrant’s mark features an oval design.   However, most common geometric shapes, such as circles, ovals, triangles, diamonds, or stars, when used as a background for word or letter marks are not considered inherently distinctive.  See In re Benetton Grp. S.p.A., 48 USPQ2d 1214, 1216 (TTAB 1998).  As the Board explained,

 

The rationale . . . is that designs of this character have been so commonly employed as background devices for word marks that composite marks of this type create but a single commercial impression with the result that purchasers would normally utilize the word portions of the marks to identify and distinguish the goods sold thereunder . . . .

 

In re Wendy’s Int’l, Inc., 227 USPQ 884, 885 (TTAB 1985) (quoting Permatex Co. v. Cal. Tube Prods., Inc., 175 USPQ 764, 766 (TTAB 1972)).

 

In this case, the word portions of the marks are nearly identical in appearance, and identical in sound, connotation, and commercial impression; therefore, the addition of background design elements does not obviate the similarity of the marks in this case.  See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).

 

Applicant argues that the respective marks are different because they create different commercial impressions.  Specifically, applicant argues that “Applicant uses the letters ISS as an acronym for its company Industrial Solutions & Supply, while the registrant has ‘iss’ for International Service System.” See applicant’s response dated January 9, 2020.  However, applicant’s argument is unpersuasive because the marks are compared as they appear in the drawing of the application and in the registration; the USPTO does not consider how an applicant and registrant actually use their marks in the marketplace.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1324, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)). 

 

Therefore, the marks are confusingly similar. 

 

The Services Are Legally Identical  

 

The services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared services not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

As amended, applicant’s services involve “Water treatment services in the nature of selecting and adding additives to water and creating a mixture as a component for addition to a manufacturing process or a mining process; Treating water by adding defoamers, polymers and flocculants to a water supply directed to an outdoor mining operation; Treating water by adding defoamers, polymers, flocculants, and pH control additives for a manufacturing process such as pulp and paper manufact” in International Class 40. 

 

Registrant’s services include “Waste processing and treatment; Water treating” in International Class 40.

 

In this case, the respective services are closely related because both parties provide water treatment services, also called sewage or domestic wastewater treatment, that are used to improve the quality of water to make it appropriate for a specific end-use. See attached evidence from Wikipedia, Collins Dictionary, Encyclopedia.com, and Sciencing.  Determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

Additionally, the registration uses broad wording to describe “water treating,” which presumably encompasses all services of the type described, including applicant’s more specific “water treatment services in the nature of selecting and adding additives to water and creating a mixture as a component for addition to a manufacturing process or a mining process; treating water by adding defoamers, polymers and flocculants to a water supply directed to an outdoor mining operation; treating water by adding defoamers, polymers, flocculants, and pH control additives for a manufacturing process such as pulp and paper manufact.”    See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s services are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Meanwhile, applicant argues that the respective services are different because “Applicant has limited the water treatment services to particular water treatment services used in particular manufacturing contexts.” In support of this argument, applicant provided extrinsic evidence consisting of screenshots from the registrant’s website which shows that the registered mark is “used only in regard to water treatment as part of a facilities management context” unlike “Applicant's services [that] treat water as an ingredient mixture in manufacturing and industrial environments as now recited in the application.”  While this is helpful, it is unpersuasive because the limitations that are key to applicant’s arguments are not present in the registrant’s identification.  As previously discussed, determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See TMEP and case citations in previous section, supra.  In this case, registrant’s “water treating” services are broadly worded to encompass all and every type of water treatments services including the specific type set forth in applicant’s identification. Therefore, applicant’s services are wholly within the scope of registrant’s services.     

 

Applicant further argues that the respective services travel through different trade channels of trade; however, the respective goods are legally identical and there are no restrictions or limitations to the channels of trade in the respective identifications, it is presumed that the services travel through the same channels of trade to the same classes 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)). 

 

Lastly, applicant asserts that “Applicant is aware of absolutely no actual confusion between the registrant and the Applicant’s company.”  However, “‘[a] showing of actual confusion is not necessary to establish a likelihood of confusion.’”  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii).  “[T]he relevant test is likelihood of confusion, not actual confusion.”  In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original).  “Uncorroborated statements of no known instances of actual confusion . . . are of little evidentiary value,” especially in ex parte examination.  In re Majestic Distilling Co., 315 F.3d 1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).

 

Therefore, because the marks are similar and the services are closely related and provided in the same trade channels, it is likely that a consumer would likely mistakenly believe applicant’s services are offered by registrant or vice versa.  For these reasons, as detailed supra, the refusal to register pursuant to Section 2(d) of the Trademark Act is MADE FINAL.

 

RESPONSE GUIDELINES FOR FINAL REFUSAL(S): Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

1)      A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

2)      An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Miroslav Novakovic/

Trademark Examining Attorney

U.S. Patent & Trademark Office

Phone: (571) 272-2866

E-mail: miroslav.novakovic@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on April 05, 2021 for

U.S. Trademark Application Serial No. 88083772

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Miroslav Novakovic/

Trademark Examining Attorney

U.S. Patent & Trademark Office

Phone: (571) 272-2866

E-mail: miroslav.novakovic@uspto.gov

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from April 05, 2021, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”