To: | Moeller Precision Tool, LLC (michiganpattm@dinsmore.com) |
Subject: | U.S. Trademark Application Serial No. 88300151 - IHC - 207223-75 |
Sent: | November 12, 2019 12:12:33 PM |
Sent As: | ecom120@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88300151
Mark: IHC
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Correspondence Address:
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Applicant: Moeller Precision Tool, LLC
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Reference/Docket No. 207223-75
Correspondence Email Address: |
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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: November 12, 2019
Introduction
This Office action is in response to applicant’s communication filed on 10/28/2019.
The trademark examining attorney apologizes for any inconvenience caused by the delay in raising this issue(s).
Applicant must address all issue(s) raised in this Office action.
Further, following applicant’s response, the Sections 1, 2, and 45 refusal concerning model designation is withdrawn. See TMEP §713.02. However, the Section 2(d) refusal for a likelihood of confusion with registered marks is continued and maintained.
The following is a SUMMARY OF ISSUES that applicant must address:
Applicant must respond to all issues raised in this Office action within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION (Continued and Maintained)
In a previous Office action (4/26/2019), applicant was notified of a refusal to register under Section 2(d) of the Trademark Act for being confusingly similar to the registered marks in U.S. Registration Nos. 5612120 (IHC) and 5612121 (IHC).
In a response, dated 10/28/2019, applicant provided arguments in support of registration. Upon review, the refusal is continued and maintained. Further, applicant’s arguments will be fully addressed in a subsequent Final Office action, as appropriate.
Briefly, the reason the arguments were found to be unpersuasive is due to the identical wording or lettering in the marks (IHC) coupled with the highly related goods concerning machines and machine parts in class 7.
Applicant provides that registrant supplies equipment for offshore dredging and wet mining markets. Unfortunately, the identification of goods on the record for the application and registrations do not include any limitations or restrictions in the channels of trade or their markets or consumers. Therefore, they must be presumed to travel in the same channels and be marketed to the same class of consumers. It is noted that some of registrant’s goods include some limitations (e.g., “offshore machines and equipment, namely,…”), but not all its goods include such restrictions. Moreover, applicant’s goods include no restrictions, which would presumably be sufficiently broad to include any narrower goods identified, such as offshore machines and equipment.
Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)). Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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.
As such, the arguments have been considered; however, the refusal is continued and maintained.
SECTIONS 1 AND 45 REFUSAL – MARKS DO NOT MATCH
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in International Class 7, which is required in the application or amendment to allege use. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the specimen displays the mark as “IHC050-350P=.350”. However, the drawing displays the mark as IHC. The mark on the specimen does not match the mark in the drawing because the specimen’s mark displays the mark with additional matter (i.e., 050-350P=.350) that does not otherwise appear to be segregable or distinguishable from the actual applied-for mark. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) 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.
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. Webpages 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).
(2) Submit a request to 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.
The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14. Specifically, amending the mark to include the extraneous matter would be a material amendment because it changes the commercial impression of the lettering or applied-for mark, “IHC”.
For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
Please see response guidance below.
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 nonfinal Office action
/Jeane Yoo/
Jeane Yoo
Examining Attorney
Law Office 120
(571) 272-5021
Jeane.Yoo@uspto.gov
RESPONSE GUIDANCE