| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88083772 |
| LAW OFFICE ASSIGNED | LAW OFFICE 108 |
| MARK SECTION | |
| MARK FILE NAME | http://uspto.report/TM/88083772/mark.png |
| LITERAL ELEMENT | ISS |
| STANDARD CHARACTERS | NO |
| USPTO-GENERATED IMAGE | NO |
| COLOR(S) CLAIMED (If applicable) |
Color is not claimed as a feature of the mark. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of an equilateral triangle having a solid background with the initials ISS superimposed thereon in a way that shows the letter "I" at the top of the triangle and representing a pipe, and the letters "SS" directly below the letter "I" in a script that resembles wavy water, with a border in the shape of a two segment angle along side but separated from the bottom side and right side of the triangle. |
| ARGUMENT(S) | |
|
The Examiner has rejected the Applicant’s stylized trademark application for ISS+Design in view of U.S. Registration No. 3731527 (the ‘527 registration) for ISS inside a solid oval for “water treating.” This rejection is based on the Examiner’s contention that there is a likelihood of confusion between the marks in the same class of services. In response, the Applicant relies upon the traditional analysis under In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) and the well known “duPont factors” for assessing likelihood of confusion. The Applicant will not repeat all of the factors set forth in the landmark duPont case, but focuses on the following: 1.The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. As part of the commercial impression, the Applicant reiterates that a consumer would see the marks entirely differently, particularly in the fact that the letters ISS stand for very different words in the ultimate uses of the respective marks. The Applicant uses the letters ISS as an acronym for its company Industrial Solutions & Supply, while the registrant has “iss” for International Service System – a very general facilities “services” company explained more below. See, Prior Submission, Exh. 1, Ref. 1. The Applicant has made this difference explicit in the application by adding a statement to the fact that the Applicant's "ISS" stands for Industrial Solutions & Supply, which further limits the mark to the industrial context as intended. These meanings are factors that should be considered in the overall commercial impression that the marks make. 2.The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use. The Applicant respectfully requests that the Examiner enter and consider the amendments to the Applicant's goods and services description in class 40. The Applicant has limited the water treatment services to particular water treatment services used in particular manufacturing contexts. With the amended goods and services in mind, the Applicant further requests that the Examiner consider the attachments submitted in the prior Response as extrinsic evidence in this case. The Applicant is an industrial supplier of solutions (both chemical and problem-solving kinds) with the key being “industrial.” The Applicant’s mark, as shown in its specimens and recited in the Amended description of services, is used in connection with providing water treatment services in the nature of additives for very specific manufacturing operations. The Applicant is not a general water treatment service provider for potable water or waste water in a human inhabited facility. The Applicant's services treat water as an ingredient mixture in manufacturing and industrial environments as now recited in the application. By comparison, the ‘527 registration is applicable to and used only in regard to water treatment as part of a facilities management context. Previously submitted Exhibits 2 and 3 from the earlier response are portions of brochures from the registrant’s website. These attached Exhibits to that submission illustrate that the registrant’s mark is used only as a part of the registrant’s property services, and Exhibit 2, Ref. 1 shows that water supply to a facility is mainly a facilities management issue, along the lines of security, cleaning, catering and the other facilities-based operations of Exhibit 2, Ref. 2 with human consumption and use in mind. In fact, the registrant’s uses of the ‘527 mark must fall within one of six enumerated service areas illustrated in Exhibit 3 at Ref. 3—"cleaning, security, property management, catering, support services, and facility management.” The registrant treats the water to make it appropriate for use in an inhabited facility, but the registrant does not direct the water to a particular manufacturing process that creates a particular material that needs a specific water content. The registrant’s uses emphasize the differences in the services at hand and the fact that the marks can easily be distinguished when used in conjunction with such disparate services. 3.The similarity or dissimilarity of established, likely-to-continue trade channels. As noted above, one can readily see that the Applicant does not engage in the ‘527 registrant’s facilities management in which buildings and properties need waste and water treatment for human safety or convenience. The Applicant has an industrial solutions use by which the consuming public buys actual additives from the Applicant for water treatment and solves their industrial problem--like creating a manufacturing "recipe" of sorts. The Applicants are not part of a facilities management operation. This is entirely different than facilities management and property services of the Exhibits. The consumers of the different services related to the Applicant versus the registrant operate in completely distinct channels of trade – industrial operations versus general building and facilities management. 4. The nature and extent of any actual confusion. 5. The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion. The Applicant is aware of absolutely no actual confusion between the registrant and the Applicant’s company, and at least a decade of concurrent use has occurred with no problem. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 040 |
| DESCRIPTION | Water treatment services |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 01/01/2010 |
| FIRST USE IN COMMERCE DATE | At least as early as 01/01/2010 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 040 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| 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 manufacturing | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 01/01/2010 |
| FIRST USE IN COMMERCE DATE | At least as early as 01/01/2010 |
| ADDITIONAL STATEMENTS SECTION | |
| DISCLAIMER | No claim is made to the exclusive right to use ISS apart from the mark as shown. |
| DESCRIPTION OF THE MARK (and Color Location, if applicable) |
The mark consists of an equilateral triangle having a solid background with the initials ISS superimposed thereon in a way that shows the letter "I" at the top of the triangle, and the letters "SS" directly below the letter "I" with a border in the shape of a two segment angle alongside but separated from the bottom side and right side of the triangle. |
| SIGNIFICANCE OF MARK | ISS appearing in the mark means or signifies or is a term of art for Industrial Solutions & Supply in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application. |
| ATTORNEY SECTION (current) | |
| NAME | R. Brian Johnson |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | MEUNIER CARLIN & CURFMAN LLC |
| INTERNAL ADDRESS | 999 PEACHSTREET STREET, NE, SUITE 1300 |
| STREET | SUITE 1300 |
| CITY | ATLANTA |
| STATE | Georgia |
| POSTAL CODE | 30062 |
| COUNTRY | US |
| PHONE | 404-645-7726 |
| FAX | 404-645-7707 |
| Docketing@mcciplaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 10996-800US1 |
| ATTORNEY SECTION (proposed) | |
| NAME | R. Brian Johnson |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | MEUNIER CARLIN & CURFMAN LLC |
| INTERNAL ADDRESS | Suite 1300 |
| STREET | 999 PEACHSTREET STREET, NE |
| CITY | ATLANTA |
| STATE | Georgia |
| POSTAL CODE | 30309 |
| COUNTRY | United States |
| PHONE | 404-645-7726 |
| FAX | 404-645-7707 |
| Docketing@mcciplaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 10996-800US1 |
| OTHER APPOINTED ATTORNEY | Lisa Pavento |
| CORRESPONDENCE SECTION (current) | |
| NAME | R. BRIAN JOHNSON |
| FIRM NAME | MEUNIER CARLIN & CURFMAN LLC |
| INTERNAL ADDRESS | 999 PEACHSTREET STREET, NE, SUITE 1300 |
| STREET | SUITE 1300 |
| CITY | ATLANTA |
| STATE | Georgia |
| POSTAL CODE | 30062 |
| COUNTRY | US |
| PHONE | 404-645-7726 |
| FAX | 404-645-7707 |
| Docketing@mcciplaw.com; bjohnson@mcciplaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 10996-800US1 |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | R. Brian Johnson |
| FIRM NAME | MEUNIER CARLIN & CURFMAN LLC |
| INTERNAL ADDRESS | Suite 1300 |
| STREET | 999 PEACHSTREET STREET, NE |
| CITY | ATLANTA |
| STATE | Georgia |
| POSTAL CODE | 30309 |
| COUNTRY | United States |
| PHONE | 404-645-7726 |
| FAX | 404-645-7707 |
| Docketing@mcciplaw.com; bjohnson@mcciplaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | 10996-800US1 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /R. Brian Johnson/ |
| SIGNATORY'S NAME | R. Brian Johnson |
| SIGNATORY'S POSITION | Attorney of Record, GA Bar Member |
| SIGNATORY'S PHONE NUMBER | 404-645-7726 |
| DATE SIGNED | 01/09/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Jan 09 16:02:04 EST 2020 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.X.XX-20 200109160204821072-880837 72-7003f6ed5e1b26558212ae bcd6c04f8b52847c92ea28707 2529a78cdd4904f21-N/A-N/A -20200109145736953204 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
The Examiner has rejected the Applicant’s stylized trademark application for ISS+Design in view of U.S. Registration No. 3731527 (the ‘527 registration) for ISS inside a solid oval for “water treating.” This rejection is based on the Examiner’s contention that there is a likelihood of confusion between the marks in the same class of services. In response, the Applicant relies upon the traditional analysis under In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) and the well known “duPont factors” for assessing likelihood of confusion. The Applicant will not repeat all of the factors set forth in the landmark duPont case, but focuses on the following:
1.The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
As part of the commercial impression, the Applicant reiterates that a consumer would see the marks entirely differently, particularly in the fact that the letters ISS stand for very different words in the ultimate uses of the respective marks. The Applicant uses the letters ISS as an acronym for its company Industrial Solutions & Supply, while the registrant has “iss” for International Service System – a very general facilities “services” company explained more below. See, Prior Submission, Exh. 1, Ref. 1. The Applicant has made this difference explicit in the application by adding a statement to the fact that the Applicant's "ISS" stands for Industrial Solutions & Supply, which further limits the mark to the industrial context as intended. These meanings are factors that should be considered in the overall commercial impression that the marks make.
2.The similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use.
The Applicant respectfully requests that the Examiner enter and consider the amendments to the Applicant's goods and services description in class 40. The Applicant has limited the water treatment services to particular water treatment services used in particular manufacturing contexts.
With the amended goods and services in mind, the Applicant further requests that the Examiner consider the attachments submitted in the prior Response as extrinsic evidence in this case. The Applicant is an industrial supplier of solutions (both chemical and problem-solving kinds) with the key being “industrial.” The Applicant’s mark, as shown in its specimens and recited in the Amended description of services, is used in connection with providing water treatment services in the nature of additives for very specific manufacturing operations. The Applicant is not a general water treatment service provider for potable water or waste water in a human inhabited facility. The Applicant's services treat water as an ingredient mixture in manufacturing and industrial environments as now recited in the application.
By comparison, the ‘527 registration is applicable to and used only in regard to water treatment as part of a facilities management context. Previously submitted Exhibits 2 and 3 from the earlier response are portions of brochures from the registrant’s website. These attached Exhibits to that submission illustrate that the registrant’s mark is used only as a part of the registrant’s property services, and Exhibit 2, Ref. 1 shows that water supply to a facility is mainly a facilities management issue, along the lines of security, cleaning, catering and the other facilities-based operations of Exhibit 2, Ref. 2 with human consumption and use in mind. In fact, the registrant’s uses of the ‘527 mark must fall within one of six enumerated service areas illustrated in Exhibit 3 at Ref. 3—"cleaning, security, property management, catering, support services, and facility management.” The registrant treats the water to make it appropriate for use in an inhabited facility, but the registrant does not direct the water to a particular manufacturing process that creates a particular material that needs a specific water content. The registrant’s uses emphasize the differences in the services at hand and the fact that the marks can easily be distinguished when used in conjunction with such disparate services.
3.The similarity or dissimilarity of established, likely-to-continue trade channels.
As noted above, one can readily see that the Applicant does not engage in the ‘527 registrant’s facilities management in which buildings and properties need waste and water treatment for human safety or convenience. The Applicant has an industrial solutions use by which the consuming public buys actual additives from the Applicant for water treatment and solves their industrial problem--like creating a manufacturing "recipe" of sorts. The Applicants are not part of a facilities management operation. This is entirely different than facilities management and property services of the Exhibits. The consumers of the different services related to the Applicant versus the registrant operate in completely distinct channels of trade – industrial operations versus general building and facilities management.
4. The nature and extent of any actual confusion.
5. The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.
The Applicant is aware of absolutely no actual confusion between the registrant and the Applicant’s company, and at least a decade of concurrent use has occurred with no problem.