United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88171382
Mark: GATEKEEPER
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Correspondence Address: LAW OFFICE OF SUNISHA S. CHOKSI
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Applicant: Green Intellectual Properties LLC
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Reference/Docket No. 1015.011
Correspondence Email Address: |
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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: January 09, 2021
This Office action is in response to applicant’s communication filed on December 15, 2020. The applicant (1) voluntarily amended the identification of goods, and (2) argued against the refusal to register the mark under Section 2(d) of the Trademark Act. No. is acceptable.
LIKELIHOOD OF CONFUSION – FINAL REFUSAL
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 and/or 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 applicant applied to register the mar GATEKEEPER for machines and apparatus, namely, mills, breaker mills, hammer mills, screens, augers, slurry tanks and discharge pumps, for use in processing, separating and reducing the size of drill cuttings, and component parts therefor, for industrial and commercial applications, as amended.
The registered mark is GATEKEEPER for oil and gas exploration, drilling and production equipment, namely, cement retaining collars of metal for downhole pressure control above and below the retaining collars.
The applicant argued that (1) its mark is used on highly sophisticated machines, machine tools, and power-operated tools which act to process, separate and reduce the size of drill cuttings, while the goods in the cited registration are essentially for cement retaining collars of metal for down hole pressure control, and (2) the goods are classified in different classes.
Comparison of Marks
As previously stated, applicant’s mark and the registered mark 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 and/or services. Id.
Therefore, the marks are confusingly similar.
Comparison of Goods
In addition to the evidence attached to the June 15, 2020 Office action, the examining attorney is attaching Internet evidence, consisting of third-party websites, establishes that the same entity commonly manufactures, produces, or provides the relevant goods and markets the goods and/or services under the same mark and that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. 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).
Accordingly, the refusal to register the mark under Section 2(d) of the Trademark Act is made FINAL.
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).
/Alice Benmaman/
Examining Attorney
Law Office 116
(571) 272-9126
alice.benmaman@uspto.gov
RESPONSE GUIDANCE