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:February 27, 2020

 

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

 

THIS IS A FINAL ACTION.

 

STATUS OF THE APPLICATION

 

This Office action responds to applicant’s Petition to Revive dated January 13, 2020, where applicant:

 

(1)   Revived the application;

(2)   Argued against the Section 2(d) Refusal;

(3)   Amended the identification of goods; and

(4)   Submitted a foreign application to perfect the 44(e) filing basis and amended the filing basis to 44(e)

 

The examining attorney has reviewed the applicant’s response and determined the following:

 

(1)   Applicant’s foreign registration is acceptable and made of record and applicant’s current filing basis is amended to 44(e);

(2)   Applicant’s amended identification is not acceptable, therefore the Identification of Goods Requirement and the Clarification of Number of Classes to be Registered Requirement are maintained and made FINAL; and

(3)   Applicant’s arguments against the Section 2(d) Refusal are not persuasive, therefore the Section 2(d) Refusal is maintained and made FINAL. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

SUMMARY OF ISSUES

• Section 2(d) Refusal – Likelihood of Confusion
• Identification/Classification of Goods Requirement
• Clarification of Number of Classes to be Registered Requirement
• Multi-Class Application Advisory

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 1421788 and 4874380. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.

 

Applicant’s mark is IRCON (in standard character form) for “industrial cooking ovens; industrial ovens for industrial use; industrial curing oven for paper industries; industrial curing oven for metal industries; gas generating furnaces for industrial use; industrial curing ovens, not for food or beverages; furnaces not for food or beverages; heating apparatus for furnaces, namely, furnace boilers; shaped fittings for ovens, namely. spark igniters for gas ovens; curing ovens for use in the paper, board, metal and food industries; curing ovens as a drying solution; electric cooking ovens for household use; gas fired water heaters; thermal treatment furnaces; gas fired combined furnaces for use in the production of steel; gas fired combined hearth-type and shaft furnaces for use steel production; gas fired space heating apparatus; furnaces for industrial use; infrared emitter radiation units for drying adhesives for use in automated manufacturing process in the nature of thermal spot curing systems for industrial use; industrial drying installations, namely, forage drying apparatus; industrial installations for airing, namely, ventilating fans for industrial purposes; industrial apparatus for drying, namely, forage drying apparatus; industrial gas operated devices using air for drying components in the electronics, semiconductor, circuit board, pharmaceutical, medical, and food and beverage industries; infrared heating panels used for indoor heating purposes for industrial use; infrared radiators for industrial use; incinerators; heat generating apparatus, namely, heat generators; steam heating apparatus for industrial or commercial purposes; burners, namely, gas burners, oxyhydrogen burners; oil and gas burners for industrial use; industrial electric heat-treating furnaces; gas fired furnaces for industrial purposes; gas operated apparatus for heating water for industrial purposes; gas fired heating installations; gas pre-heating apparatus in the nature of igniters for industrial use; industrial heating installations; industrial heating apparatus for industrial use in the nature of heating furnaces; industrial water heaters; microwave ovens for cooking; microwave ovens for industrial purposes; gas fired infrared burners for industrial use, boilers and heaters; heating units for industrial purposes; heating apparatus for industrial drying of coatings and lacquers; electric food dehydrators; electrically operated apparatus used in drying fodder and forage; portable electric warm air dryers; industrial air drying installations for electronics; drying apparatus and installations for laundry; industrial furnaces; gas burners for industrial purposes; industrial cooking ovens; industrial cooking installations in the nature of ovens; industrial heating furnaces; heating installations for industrial use; heating installations for use with gaseous fuels; gas fire radiants, namely, indoor gas radiant heating systems; electric radiant heaters for household purposes and parts therefor, namely, fans; electric radiant heaters for household purposes; gas space heaters; hot water heaters; electric cooking ovens; hot water heating installations; infrared lamps for industrial use; industrial air drying apparatus for electronics; industrial and commercial infrared air drying installations for metal drying purposes; industrial and commercial infrared air drying apparatus for metal drying purposes in industrial use; infrared furnaces for industrial use” in International Class 011.

 

The mark in Registration No. 1421788 is IRCON (in standard character form) for “infrared radiation thermometers and pyrometers” in International Class 009.

 

The mark in Registration No. 4874380 is IRCON (in standard character form) for “infrared radiation thermometers and pyrometers; line scanners; thermal imaging systems not for medical use” in International Class 009.

 

Both registrations are owned by Fluke Corporation and will henceforth be referred to together except where specified.

 

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 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. 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. 

 

In the present case, the following du Pont factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); TMEP §§1207.01 et seq.

 

Comparison of the Marks

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, applicant’s mark is IRCON and registrant’s marks are IRCON. These marks 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. Id.

 

Therefore, the marks are confusingly similar. 

 

Comparison of the Goods

 

The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

The compared goods need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

In the present case, the applicant’s goods are related to the goods in the registrations. Specifically, the goods are provided through the same trade channels and have complementary uses. The attached evidence, consisting of webpages from Omega, Cole-Palmer, Certified MTP, Chiossi E Cavazzuti, VWR, Trotec, Cesco, and CPI Heat, establishes 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. Moreover, additional attached evidence, consisting of webpages from Optris, Instrmart, and Precision Pyro, establishes that the goods are similar or complementary in terms of purpose or function, in that the registrant’s infrared thermometers are commonly used in connection with industrial ovens and furnaces for temperature measurement purposes. 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).

 

In sum, the key elements of the parties’ marks are identical and the goods are related and likely to be encountered together in the marketplace. For these reasons, consumers are likely to mistakenly believe that applicant’s and registrant’s respective goods emanate from a common source or are connected in some way.

 

Accordingly, the refusal to register under Section 2(d) of the Trademark Act is maintained and made FINAL.

 

The requirements set forth below are also maintained and made FINAL.

 

IDENTIFICATION/CLASSIFICATION OF GOODS REQUIREMENT

 

The identification of goods contains indefinite wording that requires clarification, as outlined below.

 

The wording “Industrial ovens for industrial use” in the identification of goods is indefinite and must be clarified because it does not clearly identify the type of oven provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must further specify the type of industrial ovens they provide (e.g. industrial cooking ovens, industrial induction ovens, industrial welding rod ovens, etc.).

 

The wording “Curing ovens as a drying solution” in the identification of goods is indefinite and must be clarified because curing ovens must be specified as being for industrial use. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must clarify that their curing ovens are for industrial use.

 

Applicant must clarify the wording “infrared radiators for industrial use” in the identification of goods in International Class 011 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the goods are used for. Further, this wording could identify goods in more than one international class. For example, “infrared radiator units for therapeutic purposes” are in International Class 010 and “infrared radiators for heating” are in International Class 011. 

 

Applicant must clarify the wording “gas pre-heating apparatus in the nature of igniters for industrial use” in the identification of goods in International Class 011 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because the nature of the goods are not clear. Further, this wording could identify goods in more than one international class. For example, “spark igniters for welding torches” are in International Class 013 and “spark igniters for gas appliances” are in International Class 011. 

 

Applicant must clarify the wording “boilers” in the identification of goods in International Class 011 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because the nature of the goods are not clear. Further, this wording could identify goods in more than one international class. For example, “steam engine boilers” are in International Class 007 and “industrial boilers” are in International Class 011. 

 

Applicant must clarify the wording “heaters” in the identification of goods in International Class 011 because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because the nature of the goods are not clear. Further, this wording could identify goods in more than one international class. For example, “heaters used for medical equipment during medical procedures” are in International Class 010 and “water heaters” are in International Class 011. 

 

The wording “drying apparatus and installations for laundry” in the identification of goods is indefinite and must be clarified because the nature of the goods is not clear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. TMEP §1402.03(a); see 37 C.F.R. §2.32(a)(6). If applicant uses indefinite words such as “apparatus,” such wording must be followed by “namely,” and a list of each specific product identified by its common commercial or generic name. See TMEP §§1401.05(d), 1402.03(a).

 

The wording “electric radiant heaters for household purposes and parts therefor, namely, fans” in the proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the U.S. application. See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§1012, 1402.06 et seq., 1402.07. Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the original identification in the U.S. application, and any previously accepted amendments, remain operative for purposes of future amendment. See 37 C.F.R. §2.71(a); TMEP §1402.07(d). Moreover, the original identification “radiant fan heaters” is indefinite because the nature of the goods is not clear. Applicant must clarify the goods provided using the common commercial name of the goods (e.g. electric radiant heating fans, etc.).

 

The examining attorney has provided a recommended identification in Class 011 only, based on the classification originally used in the application. However, if the recommended identification does not accurate define the applicant’s goods, applicant must provide an acceptable identification and classification. If the applicant adds an additional class, applicant must follow the multi-class guidelines outlined below. 

 

Applicant should also note the additional necessary specifications included in the suggested identification below.

 

Applicant may adopt the following wording, if accurate (suggested edits in bold):

 

Class 011: Industrial cooking ovens; Industrial [applicant to specify type of oven in Class 011, e.g. curing, cooking, etc.] ovens for industrial use; Industrial curing oven for paper industries; Industrial curing oven for metal industries; Gas generating furnaces for industrial use; Industrial curing ovens, not for food or beverages; Furnaces not for food or beverages; Heating apparatus for furnaces, namely, furnace boilers; Shaped fittings for ovens, namely. spark igniters for gas ovens; Curing ovens for use in the paper, board, metal and food industries; Curing ovens for industrial use as a drying solution; Electric cooking ovens for household use; Gas fired water heaters; Thermal treatment furnaces; Gas fired combined furnaces for use in the production of steel; Gas fired combined hearth-type and shaft furnaces for use steel production; Gas fired space heating apparatus; Furnaces for industrial use; Infrared emitter radiation units for drying adhesives for use in automated manufacturing process in the nature of thermal spot curing systems for industrial use; Industrial drying installations, namely, forage drying apparatus; Industrial installations for airing, namely, ventilating fans for industrial purposes; Industrial apparatus for drying, namely, forage drying apparatus; Industrial gas operated devices using air for drying components in the electronics, semiconductor, circuit board, pharmaceutical, medical, and food and beverage industries; Infrared heating panels used for indoor heating purposes for industrial use; Infrared radiators [applicant to specify the nature of use of the radiators, e.g. for heating, etc.] for industrial use; Incinerators; Heat generating apparatus, namely, heat generators; Steam heating apparatus for industrial or commercial purposes; Burners, namely, gas burners, Oxyhydrogen burners; Oil and gas burners for industrial use; Industrial electric heat-treating furnaces; Gas fired furnaces for industrial purposes; Gas operated apparatus for heating water for industrial purposes; Gas fired heating installations; Gas pre-heating apparatus in the nature of [applicant to specify type of igniters in Class 011, e.g. spark igniters for gas appliances, etc.] for industrial use; Industrial heating installations; Industrial heating apparatus for industrial use in the nature of heating furnaces; Industrial water heaters; Microwave ovens for cooking; Microwave ovens for industrial purposes; Gas fired infrared burners for industrial use; [applicant to specify type of boiler in Class 011, e.g. industrial, etc.] boilers; [applicant to specify type of heater in Class 011, e.g. water, etc.] heaters; Heating units for industrial purposes; Heating apparatus for industrial drying of coatings and lacquers; Electric food dehydrators; Electrically operated apparatus used in drying fodder and forage; Portable electric warm air dryers; Industrial air drying installations for electronics; Drying apparatus and installations for laundry, namely, [applicant to specify common commercial name of goods, e.g. electric laundry dryers, etc.]; Industrial furnaces; Gas burners for industrial purposes; Industrial cooking ovens; Industrial cooking installations in the nature of ovens; Industrial heating furnaces; Heating installations for industrial use; Heating installations for use with gaseous fuels; Gas fire radiants, namely, indoor gas radiant heating systems; Electric radiant heating for household purposes and parts therefor, namely, fans; Electric radiant heaters for household purposes; Gas space heaters; Hot water heaters; Electric cooking ovens; Hot water heating installations; Infrared lamps for industrial use; Industrial air drying apparatus for electronics; Industrial and commercial infrared air drying installations for metal drying purposes; Industrial and commercial infrared air drying apparatus for metal drying purposes in industrial use; Infrared Furnaces for industrial use

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods 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 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.

 

CLARIFICATION OF NUMBER OF CLASSES TO BE REGISTERED REQUIREMENT

 

The application identifies goods and/or services that are classified in at least 3 classes; however, applicant submitted a fee(s) sufficient for only 1 class. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01. For more information about adding classes to an application, see the Multiple-class Application webpage.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

The fee for adding classes to a TEAS Standard application is $275 per class. See 37 C.F.R. §2.6(a)(1)(iii). For more information about adding classes to an application, see the Multiple-class Application webpage.

 

MULTIPLE-CLASS APPLICATION ADVISORY

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 44:

 

(1)       List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)       Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods that could be classified in at least 3 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

See an overview of the requirements for a Section 44 multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.

 

RESPONSE GUIDELINES

 

Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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).

 

 

/Fox, Lyal/

Lyal Fox

Examing Attorney

Law Office 113

571-270-7884

lyal.fox@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 February 27, 2020 for

U.S. Trademark Application Serial No. 88286831

 

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. 

 

 

/Fox, Lyal/

Lyal Fox

Examing Attorney

Law Office 113

571-270-7884

lyal.fox@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 February 27, 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.”