To: | Panduit Corp. (trademarks@panduit.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88260776 - STRONGHOLD - LTA136 |
Sent: | 4/3/2019 10:32:15 PM |
Sent As: | ECOM117@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88260776
MARK: STRONGHOLD
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Panduit Corp.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 4/3/2019
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.
Likelihood of Confusion
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
Applicant seeks to register the mark STRONGHOLD for use with “Metal pipe clips, namely, conduit clips, strut clamp, clip assemblies; metal beam clamps; cable clamps of metal; electric junction boxes; metal hangers for namely, junction boxes, conduit, electrical boxes, drop wire, threaded and non-threaded rods, pipe, duct, conduit, wire, fixtures; metal brackets for conduit, switch boxes, electrical boxes, namely, stud-mounted and floor-mounted support brackets; metal purlin clips; metal conduit clamps; metal scissor clips; metal cable clip; washers of metal for fasteners; metal conduit; metal fasteners, namely, grounding screws; and metal cable trays”, “Wire connectors, namely, grounding pigtail connectors, push-in connectors, compression lugs, lever connectors, disconnects, splices, wire joints, bullet, piggyback, ring terminal, fork terminal, power connectors, grounding connector, and connector insulators; wire standoffs, retainers and saddles; ducting for electric cables; electrical raceways; lockout devices for use with electrical switches; wire marking indicia; plastic conduit for electrical use; and document printers” and “Cable ties and straps for fastening and securing objects such as bundles of wire together”.
The Registrant owns the mark STRONGHOLD for use with “Devices, namely bags, pouches, sleeves, boxes or tents made with a metal-based fabric to block external electronic communications”.
In the first step of the analysis, the examining attorney finds that the marks STRONGHOLD and STRONGHOLD are identical.
In the second step of the analysis, the examining attorney finds that the applicant’s goods and the registrant’s goods are related.
The applicant’s metal clips, junction boxes and wire connectors appear to be related to the registrant’s boxes with metal-based fabric to block external communications. Nevertheless, [w]here the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).
Because the marks are identical and the goods are electrical or for electronic use the examining attorney refuses registration of the mark under Section 2(d) of the Trademark Act. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
Applicant May Respond
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
Goods
With respect to International 6, the identification of goods is partially indefinite and must be clarified because the applicant must clarify that the goods are metal. Also the “electrical boxes” and “junction boxes” fall into International Class 9. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
With respect to International 9, the identification of goods is partially indefinite and must be clarified because the applicant must specify that the goods are for “wire” or “wire connectors”. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
With respect to International 22, the identification of goods is indefinite and must be clarified because the material content of the goods is vague. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may adopt the following identification, if accurate:
Metal pipe clips, namely, metal conduit clips, metal strut clamps and metal clip fastening assemblies; metal beam clamps; cable clamps of metal; metal hangers for junction boxes; metal conduit; electrical connection boxes; drop wire of common metal, threaded and non-threaded metal rods; metal pipe; metal heating ducts; metal conduit; metal cable wire; bar hangers and parts and fittings therefor made of metal for lighting fixtures; metal brackets for conduits, metal purlin clips; metal conduit clamps; metal scissor clips; metal cable clip; washers of metal for fasteners; metal conduit; metal fasteners, namely, grounding screws; metal cable trays used in building construction. International Class 6.
Electrical terminal boxes with stud mounted and floor mounted support brackets; switch boxes, electric junction boxes; wire connectors, namely, grounding pigtail connectors, push-in connectors, compression lugs, lever connectors, disconnect wires, splices, wire joints, bullet wire connectors, piggyback wire connectors, ring terminal wires, fork terminal connectors, power connectors, grounding connector, and wire connector insulators; wire standoffs, cable retainers and wire saddles; ducting for electric cables; electrical raceways; lockout devices for use with electrical switches; wire marking indicia for metal cable wire; plastic conduit for electrical use; and document printers. International Class 9.
Rubber cable ties and straps for fastening and securing objects such as bundles of wire together. International Class 22.
Specimen – International Class 6
Registration is refused because the catalog page specimen in International Class 6 is not an acceptable display associated with the goods and appears to be mere advertising material. See TMEP §904.07(a). The specimen, thus, fails to show the applied-for mark in use in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §2.56(a).
To be acceptable, a specimen of a print catalog must include (1) a picture or sufficient textual description of applicant’s goods that (2) shows the mark associated with the goods, and (3) the information necessary to order the goods (e.g., an order form, or a telephone number, mailing address, or e-mail address for placing orders). TMEP §904.03(h); see In re Sones, 590 F.3d 1282, 1286-89, 93 USPQ2d 1118, 1122-24 (Fed. Cir. 2009); In re U.S. Tsubaki, Inc., 109 USPQ2d 2002, 2003 (TTAB 2014). If applicant’s specimen includes a telephone number, internet address, and/or mailing address that appears only with corporate contact information, the specimen may not show sufficient means for ordering the goods. TMEP §904.03(h); see In re MediaShare Corp., 43 USPQ2d 1304, 1306-07 (TTAB 1997). In that circumstance, the specimen may also need to include instructions on how to place an order or an offer to accept orders. TMEP §904.03(h); see In re MediaShare Corp., 43 USPQ2d at 1306-07.
In this case, the specimen does not include a way of ordering the goods in that there is no order form, no electronic cart or no instruction to place an order for the good identified in Class 6. See In re Sones, 590 F.3d at 1286-89, 93 USPQ2d at 1122-24; In re Azteca Sys., Inc., 102 USPQ2d 1955, 1957 (TTAB 2012); TMEP §§904.03(i) et seq. Without this feature, the specimen is mere advertising material, which is generally not acceptable as a specimen for showing use in commerce for goods. See In re Kohr Bros., 121 USPQ2d 1793, 1794 (TTAB 2017) (quoting In re Quantum Foods, Inc., 94 USPQ2d 1375, 1379 (TTAB 2010)); In re Genitope Corp., 78 USPQ2d 1819, 1822 (TTAB 2006); TMEP §904.04(b).
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods identified in the application or amendment to allege use. 15 U.S.C. §1051(a)(1); 37 C.F.R. §2.56(a).
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpage displays may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).
Applicant may respond to this refusal by satisfying one of the following for each applicable international class:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods identified in the application or amendment to allege use. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to the Specimen webpage.
If the applicant has any questions or needs assistance in responding to this Office action, please call or e-mail the assigned examining attorney.
/D. Beryl Gardner/
Trademark Examining Attorney
Law Office 117
571-272-9162 (O)
571-273-9162 (F)
beryl.gardner@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.