UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 12/21/2018

 

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 and/or services.  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.  

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

Search Results

Class 19-A search of the Office’s database of registered and pending marks for potentially conflicting marksis deferred until applicant responds to the issue raised in this Office action.  TMEP §704.02.

 

Issues Applicant Must Address:

1. Likelihood of Confusion
2. Identification of Goods

 

1. Likelihood of Confusion-Section 2(d)

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used in connection with the identified services, is likely to be confused with the registered mark in U.S. Registration No. 4894227. See the enclosed registration. The stated refusal refers to International Class 37 only and does not bar registration in the other classes.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).

 

Applicant seeks to register the mark RHINOROCK in standard characters. The registrant’s mark is RHINO CONTRACTING in standard characters.

 

The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion.  In re Mack, 197 USPQ 755 (TTAB 1977).

 

The applicant’s mark and the registrant’s mark are similar in appearance, sound and meaning as they both contain the wording RHINO, the dominant element of the registrant’s mark and the dominant element of the applicant’s mark. The wording “Rock” in applicant’s mark is less in creating a commercial impression in the mark as it appears to refer to a building material that could be used in the construction of the swimming pools.

 

The “Contracting” element in registrant’s mark is less significant in creating a commercial impression as it has been disclaimed. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).

 

 

If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).

 

The goods and services of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods and services come from a common source.  In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).

 

Applicant's services are construction services, namely, planning, laying out, and custom construction of swimming pools. The registrant’s services are contractor services in the field of underground utilities, grading, paving, masonry, hard-scape and landscape.  The services are related as they both involve construction of outdoor structures. The word “hardscape” is defined as “The part of a tract of land, as on a building's grounds, consisting of walkways, retaining walls, patios, or other structures made with hard materials”.  See the attached definition. Patios and retaining walls could be constructed in conjuncture with swimming pools.  See the attached websites that show hardscape and swimming pools constructed by the same entity under the same mark.

http://foreveryounglandscaping.com/pool-landscape-and-fence/

http://www.manchahardscapes.com/services/swimming-pools

http://greenscenelandscape.com/

http://www.regency-pools.com/about-us.html

http://adcokc.com/swimming-pools/

 

The services would flow in the same channels of trade. The services would be marketed to consumers who are interested in having swimming pools and hardscape constructed. The attached websites show the same entity providing the two services. As a consequence confusion as to the identity of the source of the services is likely to occur.

 

If applicant responds to the refusal, applicant must also respond to the requirement set forth below.

 

2. Identification of Goods

The identification of goods is unacceptable as the wording is too vague, too broad as it identifies goods in more than one class and does not adequately identify the goods. See TMEP §§1402.01, 1402.03. Indefinite identifications are in bold.

 

Class 19-Building materials;-indefinite. Specify common commercial name of the goods, e.g.  

Class 2-Coatings comprised of stucco; Class 6-Framework of metal for building; Class 9-Circuit breakers; Class 11-HVAC units; Class 11-Flexible pipes being parts of bath plumbing installations; Class 17-Insulation materials, namely, fire-resistant doors comprised of reinforced cement and steel; Class 17-Building insulation; Class 19-Non-metal window frames; Class 27-wallpaper, etc.

 

Construction materials;-indefinite. Specify common commercial name of the goods, e.g. 

Class 2-Coatings comprised of stucco; Class 6-Framework of metal for building; Class 9-Circuit breakers; Class 11-HVAC units; Class 11-Flexible pipes being parts of bath plumbing installations; Class 17-Insulation materials, namely, fire-resistant doors comprised of reinforced cement and steel; Class 17-Building insulation; Class 19-Non-metal window frames; Class 27-wallpaper, etc.

 

Non-metallic building materials for building purposes;-indefinite. Specify common commercial name of the goods, e.g.,  Class 2-Coatings comprised of stucco; Class 9-Circuit breakers; Class 11-HVAC units; Class 11-Flexible pipes being parts of bath plumbing installations; Class 17-Insulation materials, namely, fire-resistant doors comprised of reinforced cement and steel; Class 17-Building insulation; Class 19-Non-metal window frames; Class 27-wallpaper, etc.

 

Non-metal construction materials, namely rigid foam panels, cementitious and non-metal building panels, and a polymer coating;-indefinite. Specify goods, e.g., Class 19-Decorative foam core architectural elements that are coated to resemble stone; Class 17-Foam sheeting for use as a building insulation; Class 19-Building panels, not of metal; Class 2-Polymer coatings for concrete

 

Non-metal swimming pools;-acceptable

 

Non-metal construction materials for the construction of non-metal swimming pools, namely rigid foam panels, cementitious and non-metal building panels, and a polymer coating.-indefinite. Specify goods, e.g., Class 19-non-metal construction materials for the construction of non-metal swimming pools, namely, aggregate material composed of {specify component materials and application, e.g., marble and cement} for swimming pool finishes; Class 19-non-metal construction materials for the construction of non-metal swimming pools, namely, manufactured brick veneer for use on pool sides; Class 19-Pool surrounds made of stone; Class 17- non-metal construction materials for the construction of non-metal swimming pools, namely, rigid foam panels for insulation; Class 2-non-metal construction materials for the construction of non-metal swimming pools, namely, polymer coatings for concrete

 

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.

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services 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 fees already paid (view the USPTO’s current fee schedule).  The application identifies goods and services that are classified in at least eight classes; however, applicant submitted fees sufficient for only two 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.

 

Email/Telephone for Inquiries

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

/Angela M Micheli/

Trademark Examining Attorney, Law Office 101

571.272.9196

571.273.9196 (fax)

angela.micheli@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 12/21/2018 FOR U.S. APPLICATION SERIAL NO. 88109131

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 12/21/2018 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.