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:  November 25, 2019

 

Upon further consideration, the Director has restored jurisdiction to the trademark examining attorney under 37 C.F.R. §2.84(a).  The USPTO apologizes for any inconvenience this may cause.

 

Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Summary of Issues

 

·         Section 2(d) refusal maintained and continued—consent unacceptable;

·         Clarification of owner’s address required.

 

Section 2(d) Refusal Maintained and Continued; Consent Unacceptable

Registration of the applied-for mark was previously refused because of a likelihood of confusion with the mark in U.S. Registration No. 5415515.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  In response to the refusal, the applicant submitted a Settlement and Coexistence Agreement executed by the applicant and registrants.  The agreement was accepted by the examining attorney and the Section 2(d) refusal was withdrawn.  However, upon further examination of the application record, it has been determined that the agreement is not acceptable for the reasons set forth below.  The Section 2(d) likelihood of confusion refusal is accordingly reinstituted.

 

Likelihood of Confusion

The applied-for mark is RITE*THREAD for use with a screw-thread measuring instrument.  The registered mark is RITE THREAD CHECKER, with a disclaimer of “THREAD CHECKER,” for use with screw-thread measuring machines and instruments.

 

As discussed in the Office action of May 13, 2019, consumer confusion is likely in this instance because the marks are highly similar and the goods are identical.  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”), including the similarity of the marks and the relatedness of the goods.  See In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). 

 

In particular, the marks at issue are similar in sound, appearance, and connotation because each includes the identical wording “RITE THREAD.”  Neither the inclusion of the asterisk in the applied-for mark nor the word “CHECKER” in the registered mark overcomes their confusing similarity.  The asterisk in a minor visual element that would not be verbalized when calling for the goods, and the word “CHECKER” is a less significant descriptive term that appears last in the mark.

 

The goods of the parties are identical because both are providing screw-thread measuring instruments.  These identical goods are presumed to travel in the same trade channel to the same groups of potential consumers.

 

Thus, because the marks are highly similar and the goods are identical and presumed to travel in the same trade channels, consumers who encounter the goods offered are likely to be confused as to their origin. 

 

Consent Unacceptable

In response to the refusal, the applicant has submitted a consent agreement executed by the parties.  The consent agreement, however, is a “naked consent” and is insufficient to overcome a likelihood of confusion refusal because it neither (1) sets forth reasons why the parties believe there is no likelihood of confusion, nor (2) describes the arrangements undertaken by the parties to avoid confusing the public.  See In re Mastic, 829 F.2d 1114, 1117-18, 4 USPQ2d 1292, 1295-96 (Fed. Cir. 1987); In re Permagrain Prods., Inc., 223 USPQ 147, 149 (TTAB 1984); TMEP §1207.01(d)(viii).  Such consents are generally accorded little weight in a likelihood of confusion determination without additional factors to support confusion is unlikely.  See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1362, 177 USPQ 563, 568 (C.C.P.A. 1973).

 

In this case, the only substantive provisions in the agreement supporting the conclusion that there is no likelihood of confusion are as follows:

 

3. Limitations on Rights.  REGISTRANTS agree that they will not in the future use of apply for registration of any trademark consisting of the term RITE*THREAD, or any term that may be confusingly similar to “RITE*THREAD” covering such goods as screw-thread measuring instruments; and/or related goods.

 

EPSTEIN agrees that he will not in the future use or apply for registration of any trademark, consisting of or incorporating the term CHECKER, covering such goods as screw-thread measuring machines and instruments.

 

4. Actual Confusion.  In the event that either Party becomes aware of any actual confusion or mistake occurring as a result of their uses of their respective marks, the Parties agree to communicate all details of each such instance to each other, and to cooperate reasonably to take such steps to abate the cause of confusion or mistake, and to prevent any such confusion or mistake from arising again.

 

These provisions do not alleviate the concern of likelihood of confusion.  In particular, the agreement does not include any indication that the goods travel in separate trade channels or that the parties have agreed to restrict their field of use.  Furthermore, the agreement does not indicate whether the marks have, in fact, been used for a period of time without evidence of actual confusion.

 

If applicant submits a consent agreement that (1) indicates the registrant’s consent to the use and registration of the mark, and (2) addresses the factors listed above, this refusal will be reconsidered.  However, consent agreements are but one factor to be taken into account with all of the other relevant circumstances bearing on a likelihood of confusion determination.  In re N.A.D. Inc., 754 F.2d 996, 999, 224 USPQ 969, 971 (Fed. Cir. 1985); In re E. I. du Pont, 476 F.2d at 1361, 177 USPQ at 567; TMEP §1207.01(d)(viii); see also In re Bay State Brewing Co., 117 USPQ2d 1958, 1963 (TTAB 2016).

 

Factors to be considered in weighing a consent agreement include the following:

 

(1)        Whether the consent shows an agreement between both parties;

 

(2)        Whether the agreement includes a clear indication that the goods and/or services travel in separate trade channels;

 

(3)        Whether the parties agree to restrict their fields of use;

 

(4)        Whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and

 

(5)        Whether the marks have been used for a period of time without evidence of actual confusion.

 

See In re Four Seasons Hotels Ltd., 987 F.2d 1565, 1569, 26 USPQ2d 1071, 1073 (Fed. Cir. 1993); In re Mastic, 829 F.2d at 1117-18, 4 USPQ2d at 1295-96; cf. Bongrain Int’l (Am.) Corp. v. Delice de Fr., Inc., 811 F.2d 1479, 1485, 1 USPQ2d 1775, 1779 (Fed. Cir. 1987).

 

Conclusion

The compared marks are confusingly similar, the compared goods are related, and the submitted consent agreement does not alleviate the concern of likelihood of confusion. Accordingly, the refusal to register the mark pursuant to Section 2(d) of the Trademark Act is maintained and continued.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

If applicant responds to this refusal, applicant must also respond to the issue set forth below.

 

Clarification of Owner’s Address Required

The city in the address of the owner of the mark is set forth as “Srasota.”  This appears to be a misspelling of “Sarasota.”  Applicant must clarify the correct address of the owner.  See TMEP §803.05.

 

Response Guidelines

For this application to proceed further, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

In addition, because applicant filed a TEAS RF application, applicant must respond online using the Trademark Electronic Application System (TEAS) to avoid incurring an additional fee.  See 37 C.F.R. §2.23(b)(1), (c). 

 

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  

 

 

/April A. Hesik/

Examining Attorney

Law Office 124

(571) 272-4735

april.hesik@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 25, 2019 for

U.S. Trademark Application Serial No. 88323270

 

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. 

 

 

/April A. Hesik/

Examining Attorney

Law Office 124

(571) 272-4735

april.hesik@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 25, 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.”