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:  November 08, 2019

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on September 13, 2019.

 

In a previous Office action dated March 14, 2019, 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 addition, applicant was required to satisfy the following requirement:  amend the identification of goods.

 

Based on applicant’s response, the examining attorney notes that none of the refusals or requirements have been obviated, satisfied, or withdrawn.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal and requirement in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Section 2(d) Refusal – Likelihood of Confusion
• Required Amendment to Identification of Goods

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

In a previous Office action, dated March 14, 2019, the examiner refused registration of applicant’s mark “CSR” for “Synthetic replacement for chemicals” in Class 1 based on a likelihood of confusion with U.S. Registration No. 4627785 “CSR PLUS” for “            Acidic liquid descaling compositions for industrial use for removing mineral deposits from pipelines, air stripper media, filtration basins, troughs, clarifiers, storage tanks, and water treatment plant surfaces” in Class 1. In its response the applicant amended the identification of goods to specify that its goods are
“for hydraulic fracturing,” and argued that the applicant’s and registrant’s goods are different and the consumers are sophisticated purchasers. The examining attorney finds applicant’s arguments unpersuasive and makes final the section 2(d) refusal for the reasons noted below.

 

Similarity of the Marks

 

As noted in the previous Office action the applicant’s mark and registrant’s mark are highly similar in appearance and sound and thus create a similar commercial impression. In fact, the marks are identical in part and the dominant element of both marks is “CSR” because it appears first in registrant’s mark and the additional wording does not change the commercial impression. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

Further, since the wording “PLUS” is commonly used to signify that a product is better than or succeeding another product, the marks create the impression that they may refer to the same line of products and thus emanate from the same source.

 

In its response, applicant does not contest and even admits the fact that applicant and registrant’s marks are similar in their entireties as to appearance, sound, connotation and commercial impression. Thus, as noted by the applicant, the marks are confusingly similar.

 

Relatedness of the Goods

 

Applicant’s broad amended identification of “Synthetic replacement for chemicals for hydraulic fracturing” is related to registrant’s “Acidic liquid descaling compositions for industrial use for removing mineral deposits from pipelines, air stripper media, filtration basins, troughs, clarifiers, storage tanks, and water treatment plant surfaces” because the wording synthetic replacement for chemicals includes acidic liquid descaling compositions. Moreover, the fact that applicant’s chemicals are for use in hydraulic fracturing while registrant’s are for removing mineral deposits does not foreclose relatedness of the goods given the similarity of the marks. Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion.  In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). 

 

Further, the attached evidence shows that registrant’s chemicals are similar in nature to applicant’s acidic descaling liquids. The attached evidence shows that registrant’s acidic descaling composition and applicant’s synthetic chemicals for hydraulic fracturing are similar in nature. See attached evidence from shale-gas information-platform.org noting scale inhibitors are chemical used in hydraulic fracturing fluids to “Avoid precipitates from mineralic scalings that may build up at the inner wall of the casing or in the wellhead”; see attached evidence from goodway.com showing that a descaling dissolves mineral deposits; see also attached evidence from applicant’s website noting it provides scale treatments. Thus, the goods are similar in nature.

 

In its response applicant argued that the applicant’s and registrant’s goods were for highly different purposes and applications, and thus not related. The examiner respectfully disagrees. As noted above both applicant’s synthetic replacement for chemicals used in hydraulic fracturing and registrant’s acidic descaling liquid are intended to dissolve or remove mineral deposits.

 

Also in its response applicant argued that there is no likelihood of confusion because the trade channels of the goods are different, but neither party has limited its channels of trade. Since the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers they are “presumed to travel in the same channels of trade to the same class 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)).  Thus, applicant’s and registrant’s goods are related.

 

Further, applicant asserts that there is no likelihood of confusion because applicant’s product is highly specialized and its consumers are sophisticated. The examining attorney finds applicant’s argument unpersuasive because sophisticated consumers are not immune to confusion. The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).  Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser.  In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163).

 

Thus, because the marks are highly similar in commercial impression and the goods are sufficiently related the refusal of registration based on a likelihood of confusion with the cited registration is continued, maintained, and made final.

 

REQUIRED AMENDMENT TO IDENTIFICATION OF GOODS

 

In the previous Office action, dated March 14, 2019, the examiner required that applicant amend its identification of goods. In its September 13, 2019 response to Office action applicant amended its identification of goods. However, the identification still contains indefinite wording and this requirement is made final for the reasons set forth below.

 

The wording “Synthetic replacement for chemicals for hydraulic fracturing” in the identification of goods is indefinite and must be clarified because it is unclear what the nature of the goods are from the broad identification.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Specifically, the wording “replacement for chemicals” needs to specify what the common commercial name of the synthetic replacement or substance that is replacing the chemicals, or alternatively needs to state the use or purpose of the “synthetic replacement for chemicals” i.e. for hydraulic fracturing fluids.

 

Applicant may substitute the following wording, if accurate: 

 

Class 1:         Synthetic replacement for chemicals, namely {specify the common commercial name of the synthetic chemical replacement, i.e. “synthetic chemical additives”} for hydraulic fracturing fluids used in oil and gas wells

 

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services 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 and/or services may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

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.  

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

Melanie Singer

/Melanie Singer/

Trademark Examiner

Law Office 112

(571) 272-5479

Melanie.Singer@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 November 08, 2019 for

U.S. Trademark Application Serial No. 88230657

 

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. 

 

 

Melanie Singer

/Melanie Singer/

Trademark Examiner

Law Office 112

(571) 272-5479

Melanie.Singer@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 November 08, 2019, 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.”