Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

 

Issue date:  April 16, 2020

 

This application has been removed from suspension based upon the maturation of the prior pending applications.  The applicant is advised that U.S. Serial No. 87645344 has abandoned.  Because U.S. Serial No. 79234300 has matured into registration, the following refusal applies.

 

Section 2(d)

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5876214.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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. 

 

Applicant seeks registration of the proposed mark SCHNEIDER KRUPPS for use connection with “Air conditioners; Air conditioners for vehicles; Heat pumps; Heat recovery ventilators; Solar heat collection panels; Evaporators for air conditioners.”  Registrant owns the mark KRUPP for, in most relevant part, “ Steam generating installations and replacement parts therefor; distillation apparatus not for scientific purposes and replacement parts therefor; warming installations, apparatus and machines, namely, battery warmers, car interior warmers, coolers, namely, evaporative air coolers, engine heaters, engine warming units, fuel warmers, heat exchangers not being parts of machines, heaters for engine oil, radiator hose heaters, vehicle oil pan heaters, vehicle tank heaters, ventilators for stoves, all for commercial, domestic and industrial use, heating and refrigerating installations, apparatus and machines and replacement parts therefor; drying installations and apparatus, namely, industrial dryers for dehumidifying, dryers for use in heating, dryers for ventilation systems, dryers for air conditioning and refrigeration systems, drying apparatus for chemical processing; machines for thermal treatment of residues and waste materials being heating apparatus in the nature of furnaces for refuse and sludge incineration and replacement parts therefor; synthetic gas producers, other than gas producers for motor vehicles, namely, electrochemical gas generators and gas production plants being gas generating furnaces for industrial purposes; furnaces for industrial purposes and replacement parts therefor; solar collectors for heating and replacement parts therefor.”

 

The marks at issue are confusingly similar because they are identical, in part.  Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). 

 

Moreover, the applicant’s goods and the registrant’s goods, are related and identical, in part:  both have solar collectors, and both have parts used in vehicle heating and cooling including “evaporators for air conditioners” (applicant) and “evaporative air coolers” (registrant).

 

Because the applicant has sought registration of a proposed mark that is identical, in part, to the registrant’s mark and because the goods for which applicant has sought registration are identical, in part, to the registrant’s goods, purchasers encountering these marks in commerce would likely mistakenly believe that all of the goods emanate from one source.  Because source confusion is likely, registration must be refused under Trademark Act Section 2(d)..

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

If the applicant has any questions, please contact the undersigned.

 

 

 

 

/Janice L. McMorrow/

Janice L. McMorrow

Trademark Examining Attorney

Law Office 115

571-272-9194

janice.mcmorrow@uspto.gov (informal)

 

 

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 April 16, 2020 for

U.S. Trademark Application Serial No. 88267631

 

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. 

 

 

/Janice L. McMorrow/

Janice L. McMorrow

Trademark Examining Attorney

Law Office 115

571-272-9194

janice.mcmorrow@uspto.gov (informal)

 

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 April 16, 2020, 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.”