UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

OFFICE ACTION

STRICT DEADLINE—TO AVOID ABANDONMENT OF THIS TRADEMARK APPLICATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS OFFICE ACTION 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: 3/16/2019

The undersigned examining attorney has reviewed the above-referenced application, in accordance with section 2.61 of the Trademark Rules of Practice, 37 C.F.R. § 2.61 (2018), and has determined that the application cannot be advanced at this time, for the reasons detailed in this communication.

SUBSTANTIVE REFUSAL

REGISTRATION REFUSED—LIKELIHOOD OF CONFUSION

Applicant filed this application on December 13, 2018, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a) (2012), based on its use of the mark “PRIMO,” to indicate the source of various roofing materials in International Class 19.

Registration of the applied-for mark is refused, pursuant to Section 2(d), because of likely confusion with the subject mark of U.S. Registration No. 5516047, issued on July 17, 2018, attached hereto.  Id. § 1052(d); see TMEP § 1207.01. 

This cited registered mark is “FUNDO PRIMO,” used to indicate the source of various goods, including “asphalt; pitch; bitumen.”  This refusal is limited to just these goods in the cited registration.

Section 2(d) is the statutory prohibition against registration when an applied-for mark so resembles a registered mark that it is likely, when applied to the relevant goods or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods or services.  15 U.S.C. § 1052(d); see TMEP § 1207.01.  In re E. I. du Pont de Nemours & Company sets forth the principal factors, considered on a case-by-case basis, in determining whether one mark is likely to cause confusion with another mark.  476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973).  The focus of a likelihood of confusion analysis should be the most dispositive DuPont factors, which in ex parte prosecutions are generally the similarities of the marks, the first DuPont factor, the relatedness of the goods or services, the second DuPont factor, and the similarity of the trade channels, the third DuPont factor.  In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 U.S.P.Q.2d 1257, 1259 (Fed. Cir. 2010).  In such cases, likely confusion is often determined by comparing the marks for similarities in appearance, sound, connotation and commercial impression, and by comparing the goods or services to determine whether they are similar or related, or whether the activities surrounding their marketing are such that confusion as to origin is likely.  See, e.g., In re Aquamar, Inc., 115 U.S.P.Q.2d 1122 (TTAB 2015); see TMEP § 1207.01.    

a.        RELATEDNESS OF RELEVANT GOODS, CHANNELS OF TRADE & CLASSES OF CONSUMERS

For purposes of determining the strength of the second DuPont factor for Section 2(d) analysis, likely confusion is determined on the basis of the goods or services as they are identified in the application and the registration.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973); see, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 U.S.P.Q.2d 1047, 1052 (Fed. Cir. 2018). 

Here, the comparison is between the following:

Goods in this application:

Roofing fabrics; Roofing felts; Roofing membranes; Roofing underlayment; Asphalt roofing felt; Bituminous roof coatings; Bituminous coatings for roofing; Non-metal roofing; PVC roofing membrane; Waterproofing membranes for roofing, floors and walls;

Relevant goods in U.S. Registration No. 5516047:

Asphalt; pitch; bitumen.

Where the listed goods in the application at issue or in the cited registration are broadly identified as to their nature and type, without restrictions as to the channels of trade and limitations as to the classes of purchasers, it is presumed that in scope the identification of goods encompasses all the goods of the nature and type, and that the identified goods are offered in all normal channels of trade, and to all potential purchasers.  In re Elbaum, 211 U.S.P.Q. 639, 640 (TTAB 1981); see TMEP § 1207.01(a)(iii).    

“PITCH” is defined in the relevant context as “any of various thick, dark, sticky substances obtained from the distillation residue of coal tar, wood tar, or petroleum and used for waterproofing, roofing, caulking, and paving” and “any of various natural bitumens, such as mineral pitch or asphalt.”  Am. Heritage Dictionary of the English Language (5th ed. 2019), http://www.ahdictionary.com/ (attached hereto).

Here, the identified “asphalt; pitch; bitumen” in the cited registration encompasses the more narrowly identified “Asphalt roofing felt; Bituminous roof coatings; Bituminous coatings for roofing” in this application.  Similarly, “Roofing fabrics; Roofing felts; Roofing membranes; Roofing underlayment; . . . Non-metal roofing; . . . Waterproofing membranes for roofing, floors and walls” in this application encompasses asphalt, pitch and bitumen in the cited registration.  In this regard, these goods are legally identical. 

Where the goods are legally identical, it must be presumed that the channels of trade and classes of purchasers are the same.  In re Viterra Inc., 671 F.3d 1358, 101 U.S.P.Q.2d 1905, 1908 (Fed. Cir. 2012); In re Smith & Mehaffey, 31 U.S.P.Q.2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers.”); see TMEP § 1207.01(a)(iii).

With respect to the listed “PVC roofing membrane” in this application, which does not appear in the cited registration, and its availability from roofing products manufacturers, the attached evidence, comprised of digital images of roofing manufacturers’ website pages, supports a determination that these types of goods are commonly marketed without limitation or restrictions in connection with at least one source identifier by third parties, and are related goods.  See attached Internet evidence.  

In considering the channels of trade and classes of purchasers, because there are no limitations in the cited registration and the subject application, it is presumed that the respective goods travel in all normal channels of trade and are offered to all potential relevant consumers.  In re i.am.symbolic, llc, 866 F.3d 1315, 123 U.S.P.Q.2d 1744, 1749 (Fed. Cir. 2017). 

In view of the foregoing analysis, the respective goods are sufficiently related to cause likely confusion as to their source in the minds of the consuming public if offered under the same or similar marks, and thus, the legal test for relatedness of the goods, the second DuPont factor, and the test regarding established, likely-to-continue trade channels, the third DuPont factor, both favor a finding of likelihood of confusion.

B.        Comparison of the Marks

For purposes of determining the strength of the first DuPont factor for Section 2(d) analysis, the similarity or dissimilarity of the marks is determined by focusing on the appearance, sound, connotation and commercial impression of the marks in their entirety.  Stoncor Group, Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1331, 111 U.S.P.Q.2d 1649, 1651 (Fed. Cir. 2014).  In addition, in comparisons such as this one, when the “marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.”  Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877, 23 U.S.P.Q.2d 1698, 1701 (Fed. Cir. 1992). 

Consideration of the marks in a likelihood of confusion determination is not based on whether the marks can be distinguished when subjected to a side-by-side comparison, “but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result.”  In re Davia, 110 U.S.P.Q.2d 1810, 1813 (TTAB 2014).  Analysis requires factoring into account the fallibility of memory over time and the fact that the average purchaser retains a general rather than a specific impression of trademarks.  See In re Mucky Duck Mustard Co., 6 U.S.P.Q.2d 1467, 1468 (TTAB 1988); Chemetron Corp. v. Morris Coupling & Clamp Co., 203 U.S.P.Q. 537 (TTAB 1979); TMEP § 1207.01(b). 

Here, the marks resemble each other.  Most significantly, both marks share the term “PRIMO,” defined in the relevant context as “first” and “highly or most valuable,” Am. Heritage Dictionary of the English Language (5th ed. 2019), http://www.ahdictionary.com/ (attached hereto), which in the context of the goods, is suggestive in relation to the respective goods.  The term “PRIMO” would share the same meaning or connotation to the relevant consumer. 

“PRIMO” forms the entirety of Applicant’s proposed mark and this fact is critical in this analysis, as the cited registered mark incorporates the entirety of Applicant’s proposed mark.  Likelihood of confusion has frequently been found where one mark incorporates the entirety of another mark.  See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 U.S.P.Q.2d 1257, 1260 (Fed. Cir. 2010) (citations revised) (“ML” for personal care and skin care products and “ML MARK LEES” for skin care products); Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 U.S.P.Q. 105, 106 (C.C.P.A. 1975) (“BENGAL” for gin and “BENGAL LANCER” for nonalcoholic club soda, quinine water and ginger ale); In re Toshiba Med. Sys. Corp., 91 U.S.P.Q.2d 1266, 1269 (TTAB 2009) ( “VANTAGE TITAN” for MRI diagnostic apparatus and “TITAN” for medical ultrasound device); In re U.S. Shoe Corp., 229 U.S.P.Q. 707 (TTAB 1985) (“CAREER IMAGE” for women's clothing stores and women's clothing and “CREST CAREER IMAGES” for uniforms); In re S. Bend Toy Mfg. Co., 218 U.S.P.Q. 479, 480 (TTAB 1983) (“LIL’ LADY BUG” for toy doll carriages and “LITTLE LADY” for doll clothing); Helga, Inc. v. Helga Howie, Inc., 182 U.S.P.Q. 629, 630 (TTAB 1974) (“HELGA” for women’s clothing and “HELGA HOWIE” for women’s clothing); In re Hepperle, 175 U.S.P.Q. 512, 512 (TTAB 1972) (“ACAPULCO GOLD” for suntan lotion and “ACAPULCO” for lipstick and powder).

Based on examination of the PTO trademark database record, the owner of cited registered mark owns the only registered mark containing the term “PRIMO” for roofing products, supporting a determination that “PRIMO” is commercially strong for such goods.   

Further as to appearance, Applicant’s applied-for mark, PRIMO, is a special form mark consisting of this wording in stylized letters with crimson and dark grey claimed as features of the mark.  The cited registered mark, FUNDO PRIMO, is presented entirely in standard character form.  The rights associated with a mark in standard characters reside in the wording and not in any particular display in terms of font, style, size or color.  In re RSI Sys., LLC, 88 U.S.P.Q.2d 1445, 1448 (TTAB 2008).  Therefore, in actual use, the cited registered mark may be displayed in a same manner of font, style, color and size as the proposed mark in this application.  In re Viterra Inc., 671 F.3d 1358, 1363, 101 U.S.P.Q.2d 1905, 1909 (Fed. Cir. 2012); In re Strategic Partners Inc., 102 U.S.P.Q.2d 1397, 1399 (TTAB 2012).  Thus, for comparison purposes, Applicant’s stylization and color claim are without significance, and the marks look highly similar.

The sole difference between the marks is the use of the term “FUNDO” in the cited registered mark, which would be understood by the relevant purchaser to be the primary product mark or house mark of the owner of the cited registration, used to indicate its construction and building products.  See, e.g., U.S. Registration Nos. 5398644 (“FUNDO PERSONO”), 5398738 (“FUNDO LINO”), 5516046 (FUNDO RIOLITO).  “It is a general rule that the addition of extra matter such as a house mark or trade name to one of two otherwise confusingly similar marks will not serve to avoid a likelihood of confusion between them.”  In re Dennison Mfg. Co., 229 U.S.P.Q. 141, 144 (TTAB 1986); see In re Toshiba Med. Sys. Corp., 91 U.S.P.Q.2d 1266, 1269 (TTAB 2009).  “Rather, such addition may actually be an aggravation of the likelihood of confusion as opposed to an aid in distinguishing the marks so as to avoid source confusion.”  In re Christian Dior, S.A., 225 U.S.P.Q. 533, 534 (TTAB 1985).  Inasmuch as the words “FUNDO” and “PRIMO” are not naturally associated, the term PRIMO would retain its identity as a separately identifiable term in the cited registered mark. Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 U.S.P.Q. 937, 939 (Fed. Cir. 1983) (“[I]n SQUIRT SQUAD, SQUIRT retains its identity.”).

Keeping in mind that the marks in this comparison are used on legally identical goods, the necessary degree of similarity between the marks is less than if the goods had only been related.  Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877, 23 U.S.P.Q.2d 1698, 1701 (Fed. Cir. 1992). 

In sum, Applicant’s mark sufficiently resembles the cited registered mark that if used on the same and related goods confusion would be likely to occur.

Viewed in their entireties with the differences evaluated, the marks are similar in appearance, sound and meaning, and would create similar commercial impressions on the minds of purchasers.  Thus, despite considering the differences of the respective marks, their similarities far outweigh the dissimilarities, based on guiding legal authority, and the rights vested in the registered mark.  Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 U.S.P.Q.2d 1001, 1003 (Fed. Cir. 2002).  Therefore, the legal test for similarity of the marks, the first DuPont factor, favors a finding of likelihood of confusion.   

Based on a determination that the marks are similar and the goods are in part identical and in part related, and the presumption that the goods move in the same channels of trade and are available to the same classes of consumers, Applicant’s mark is refused registration on the grounds of likely confusion with the above-cited registered mark as to “asphalt; pitch; bitumen” in its listing of goods.

Although the examining attorney has refused registration, Applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. 

ADVISORIES

COLOR CLAIM & LOCATION STATEMENT OF THE MARK

In the initial filing, Applicant properly complied with the requirement to list all claimed colors and identify their location in the mark.  The color claim and location statement is amended for purposes of clarity, as follows:

The colors CRIMSON and DARK GREY are claimed as a feature of the mark.

The mark consists of the word “PRIMO” with the letter P in dark grey and crimson and the rest of the letters all in dark grey.

37 C.F.R. § 2.52(b)(1); TMEP §§ 707.02, 807.07(a)(ii). 

TEAS PLUS OR TEAS REDUCED FEE (RF) APPLICANT ADVISORY

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.   Applicant must respond timely and completely to the issues raised in this Office Action.  15 U.S.C. § 1062(b); 37 C.F.R. §§ 2.62, 2.65(a); TMEP §§ 711, 718.03.  Otherwise, this application will be abandoned.  37 C.F.R. § 2.65(a). 

Applicant must respond timely and completely to the issues raised in this Office Action.  15 U.S.C. § 1062(b); 37 C.F.R. §§ 2.62, 2.65(a); TMEP §§ 711, 718.03.  Otherwise, this application will be abandoned.  37 C.F.R. § 2.65(a). 

Please contact the undersigned attorney with any questions.

Sincerely,

/Judy Helfman/

Attorney Advisor

Law Office 111

571/272-5892

judy.helfman@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 3/16/2019 FOR U.S. APPLICATION SERIAL NO. 88228330

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 3/16/2019 (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.