United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88329621
Mark: GAMMA VACUUM
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Correspondence Address: WESTMAN, CHAMPLIN AND KOEHLER, P.A. 121 SOUTH EIGHTH STREET, SUITE 1100
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Applicant: Edwards Vacuum LLC
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Reference/Docket No. E224.6000US1
Correspondence Email Address: |
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SECOND 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: December 31, 2019
This Office action is in response to applicant’s communication filed on November 22, 2019.
In a previous Office action(s) dated May 23, 2019, the applicant was required to satisfy the following requirement(s):
Based on applicant’s response, the trademark examining attorney notes that all requirements have been satisfied.
Upon further review of the application, the trademark examining attorney now makes the new refusal(s) and/or requirement(s) in the summary of issues below. The examining attorney apologizes for any inconvenience.
SUMMARY OF ISSUES that applicant must address:
REFUSAL UNDER SECTION 2(d) – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES TO CLASSES 7 and 42 ONLY
- U.S. Registration No. 3079743 for GAMMA,
- U.S. Registration No. 3862628 for GAMMA ELECTRIC USA,
- U.S. Registration No. 4853272 for GAMMA, and
- U.S. Registration No. 4970890 for GAMMAVITA.
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). In the seminal decision In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the court listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all the factors are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Similarity of the Marks
The respective marks, GAMMA VACUUM, as well as GAMMA, GAMMA ELECTRIC USA, and/or GAMMAVITA, are substantially similar in appearance, sound and meaning.
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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). Similarity in any one of these elements may be sufficient to find the marks confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).
Along the same lines, likelihood of confusion is often found where the entirety of one mark is incorporated within another. Coca-Cola Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL for gin and BENGAL LANCER for nonalcoholic club soda, quinine water and ginger ale); In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant’s mark ML is similar to registrant’s mark ML MARK LEES); In re United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (CAREER IMAGE for women's clothing stores and women's clothing likely to cause confusion with CREST CAREER IMAGES for uniforms including items of women’s clothing); In re South Bend Toy Manufacturing Company, Inc., 218 USPQ 479, 480 (TTAB 1983) (LIL’ LADY BUG for toy doll carriages and LITTLE LADY for doll clothing); and Johnson Publishing Co. v. International Development Ltd., 221 USPQ 155, 156 (TTAB 1982) (EBONY for cosmetics and EBONY DRUM for hairdressing and conditioner).
With respect to Reg. Nos. 3079743 and 4853272, the applicant’s mark and the registrants’ marks have the identical term “GAMMA” which is the whole of registrants’ marks. As such registrants’ marks are incorporated in applicant’s mark GAMMA VACUUM.
With respect to Reg. Nos. 3862628 and 4970890, although there are other components such as the term “-VITA” and the descriptive terms “VACUUM”, and “ELECTRIC USA”, these additional components do not substantially alter the meaning such that the respective marks share the same connotation and overall commercial impression. Slight differences in the sound of similar marks will not avoid a likelihood of confusion. In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983); see In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012).
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
Here, “VACUUM” and “ELECTRIC USA” are disclaimed from applicant’s and registrant’s marks, respectively, for descriptiveness. As such, when comparing the dominant portion of registrant’s mark against the non-descriptive portion of applicant’s mark, there is a strong likelihood of confusion.
Furthermore, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Consequently, applicant’s mark and registrant’s mark are similar in sound, appearance, and meaning.
Relatedness of the Goods/Services
With respect to this refusal, applicant’s mark is for “VACUUM PUMPS; VACUUM PUMPS IN THE NATURE OF ION PUMPS AND TITANIUM SUBLIMATIONS PUMPS; GETTER PUMPS” in International Class 7 and “NEW PRODUCT DESIGN SERVICES IN THE FIELD OF VACUUM PUMPS” in International Class 42.
The registrants’ identifications are as follows, in relevant part:
Reg. No. |
G/S |
3079743 |
Cl. 7: machines for manufacturing semiconductors and parts for such machines |
3862628 |
Cl. 7: fluid power component kit for machine control comprising pumps and valves |
4853272 |
Cl. 7: Machines, namely, mixing, premixing, homogenizing, dispergating, suspending, pumping machines for the chemical, cosmetic, pharmaceutical and food industries and their structural parts
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4970890 |
Cl. 7: Machines, namely, mixing, premixing, homogenizing, dispergating, suspending, pumping machines for the chemical, cosmetic, pharmaceutical and food industries and their structural parts |
Determining likelihood of confusion is based on the description of the goods and/or services 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)).
Applicant’s website, attached, shows that applicant offers pumps for power generation, semiconductor and chemical and food processing industries, as well as measurement and control purposes.
Further, with respect to Reg. No. 4853272, the registration uses broad wording to describe engineering design for the chemical, cosmetic, pharmaceutical and food industries, which presumably encompasses all goods of the type described, including applicant’s more narrow new product design services in the field of vacuum pumps which are applicable in the chemical, cosmetic, pharmaceutical and food industries. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the services 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 services are related.
Thus, upon encountering applicant’s and registrants’ marks, consumers are likely to be confused and mistakenly believe that the respective goods and/or services emanate from a common source.
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
PARTIAL ABANDONMENT – ADVISORY
If applicant does not respond to this Office action within the six-month period for response, International Classes 7 and 42 will be deleted from the application. The application will then proceed with International Class 9 only. See 37 C.F.R. §2.65(a)-(a)(1); TMEP §718.02(a).
RESPONSE GUIDELINES
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.
/Jeanie H. Lee/
Examining Attorney
Law Office 105
571-272-6110
jeanie.lee@uspto.gov
RESPONSE GUIDANCE