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:  July 24, 2020

 

This Office action is in response to applicant’s communication filed on June 30, 2020.

 

In a previous Office action(s) dated December 31, 2019, the trademark examining attorney refused registration of the applied-for mark under Trademark Act Section 2(d) for a likelihood of confusion with registered marks.

 

After consideration of applicant’s response, the trademark examining attorney notes that the refusal for likelihood of confusion with respect to Reg. No. 3862628 has been withdrawn. 

 

Further, the trademark examining attorney maintains the FULL refusal(s) and/or requirement(s) in the summary of issues below. 

 

SUMMARY OF ISSUES that applicant must address:

• Refusal Under Section 2(d) – Likelihood of Confusion

 

Refusal Under SECTION 2(d) – Likelihood of Confusion

 

Registration of the applied-for mark remains refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 3079743, 4853272, and 4970890.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See previously attached copies of cited 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, GAMMA, and 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).

 

Moreover, marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

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. No. 4970890, although there are other components such as the term “-VITA” and the descriptive terms “VACUUM”, 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” is disclaimed from applicant’s mark for descriptiveness.  As such, when comparing the dominant portion of registrant’s marks 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 in the nature of ion pumps and titanium sublimation pumps; getter pumps” in International Class 7, “power controllers for vacuum pumps; electric control devices for vacuum pumps” in International Class 9, 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
4853272	Cl. 7:  Machines, namely, mixing, premixing, homogenizing, dispergating, suspending, pumping machines for the chemical, cosmetic, pharmaceutical and food industries and their structural parts Cl. 42:  engineering services in the field of industrial plant layout and design for the chemical, cosmetic, pharmaceutical and food industries
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)).  

 

In this case, the registrations use broad wording to describe “machines for manufacturing semiconductors and parts for such machines,” “machines, namely, mixing, premixing, homogenizing, dispergating, suspending, pumping machines for the chemical, cosmetic, pharmaceutical and food industries and their structural parts” and “engineering services in the field of industrial plant layout and design for the chemical, cosmetic, pharmaceutical and food industries”, which presumably encompasses all goods/services of the type described, including applicant’s more narrow “vacuum pumps in the nature of ion pumps and titanium sublimation pumps; getter pumps” and “new product design services in the field of vacuum pumps”.  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 goods/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 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 and/or services are related.

 

In the response, applicant contends that the registrant’s identification for “machines for manufacturing semiconductors” is unclear; however, the Office views this wording to be definite. Generally, if a cited registration describes goods or services broadly, and there is no limitation as to their nature, type, channels of trade, or class of purchasers, it is presumed that the registration encompasses all goods or services of the type described, that they move in all normal channels of trade, and that they are available to all classes of purchasers. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1373, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) ("We have no authority to read any restrictions or limitations into the registrant’s description of goods."); TMEP §1207.01(a)(iii).

 

An applicant may not restrict the scope of its goods and/or the scope of the goods covered in the registration by extrinsic argument or evidence. See, e.g., In re FCA US LLC, 126 USPQ2d 1214, 1217 (TTAB 2018), appeal filed, No. 18-2069 (Fed. Cir.); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008) ; In re Bercut-Vandervoort & Co., 229 USPQ 763, 764–65 (TTAB 1986)); see also In re Detroit Athletic Co., ___ F3d ___, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) ("The third DuPont factor—like the second factor—must be evaluated with an eye toward the channels specified in the application and registration, not those as they exist in the real world."); TMEP §1207.01(a)(iii).

 

Here, the compared goods and/or services 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).

 

The previously attached evidence from applicant’s website and from EVP showed that vacuum pumps are machines for manufacturing semiconductors, meaning registrant’s goods are so broadly worded as to encompass vacuum pumps. While the cited registrations each have additional wording defining their use in different industries (specifically, semiconductor manufacturing, fluid power component kits for machine control, and chemical/pharmaceutical/food industries), the applicant’s identification is so broadly worded as to encompass pumps in any industry or for any use.

 

Applicant’s website, previously attached, showed that applicant offers pumps for power generation, semiconductor and chemical and food processing industries, as well as measurement and control purposes.

 

The previously attached Internet evidence from Ebara Technologies, EVP, Kashiyama, Pfeiffer Vacuum, and Trillium, establishes that the same entity commonly provides various types of pumps without restriction as to industry use and markets these goods under the same mark. Further, these companies sell pumps specifically for semiconductor manufacturing, fluid power component kits for machine control, and for the food, chemical, and pharmaceutical industries. Ebara Technologies makes pumps for semiconductor manufacturing, chemical, pharmaceutical, and automotive industries; EVP offers pumps for semiconductor manufacturing, freeze drying, sugar processing, and laboratory and pharmaceutical applications, among other uses; Kashiyama provides pumps for semiconductor manufacturing, general manufacturing, laboratory and research applications, and freeze drying; Preiffer Vacuum offers pumps that can be customized for any application, some of the uses specified include machine control and leak detection, semiconductor manufacturing, metallurgy, and automotive, chemical and pharmaceutical applications; Trillium makes pumps for various industries, including semiconductor manufacturing, metallurgy, and environmental analysis.

 

Further, the hereto attached evidence from SAES, Semiconductor Saftey Handbook by Richard A Bolmen, Jr, Vacom shows that ion and getter pumps, often used in combination with titanium sublimation pumps, are machines used in the manufacture of semiconductors, as well as machines used in the various industries, including any industry with a chemical science foundation, specifically for microscopy, mass spectrometry, and surface analysis. SAES Getters also has a patent disclosing a getter pump system and method of use for semiconductor manufacturing. See the attached evidence from RBD Instruments and Vacom showing that titanium sublimation pumps are used with ion and getter ion pumps to improve pumping efficiency.

 

The attached evidence from Agilent, Duniway Stockroom Corp., and Capovani Brothers shows that the same entity provides “machines for manufacturing semiconductors and parts for such machines,” and “machines, namely, mixing, premixing, homogenizing, dispergating, suspending, pumping machines for the chemical, cosmetic, pharmaceutical and food industries and their structural parts” both in the nature of vacuum pumps, and vacuum pump controllers under the same mark, and also through the same channels of trade, to the same classes of consumer, for the same purposes.

 

The attached evidence from Altair, Modion Pumps, SAES, and TFS establishes that the same entity provides “machines for manufacturing semiconductors and parts for such machines,” and “machines, namely, mixing, premixing, homogenizing, dispergating, suspending, pumping machines for the chemical, cosmetic, pharmaceutical and food industries and their structural parts and various types of pumps and designs pumps, all under the same mark. Altair provides ion pumps and designs custom ion pumps. Modion Pumps and SAES provide ion pumps and design such pumps. TFS sells vacuum pumps and provides custom design thereof.

 

Thus, applicant’s and registrant’s goods and/or services 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).

 

Applicant’s Arguments

 

Applicant argues that there is no likelihood of confusion because the word “GAMMA” is weak on the register.  Here, applicant points to the cited registrants as “GAMMA”-formative marks to support that “GAMMA” is entitled to a narrow scope of protection.  However, evidence comprising only a small number of third-party registrations for similar marks with similar goods and/or services, as in the present case, is generally entitled to little weight in determining the strength of a mark.  See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973).  These few registrations are “not evidence of what happens in the market place or that customers are familiar with them.”  AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d at 1406, 177 USPQ at 269; In re I-Coat Co., 126 USPQ2d 1730, 1735 (TTAB 2018).  Thus, the registrations for GAMMA-formative mark argued by applicant are insufficient to establish that this wording is weak or diluted. 

 

Further, the applicant argues that the purchasers of the goods are sophisticated. The examining attorney finds this argument unpersuasive. The identification of goods are not limited as to channels of trade in any way. The above referenced evidence shows that these goods are in the exact same channels of trade, as they are used for the same purposes. Again, a comparison of the goods is based on the identifications at issue, not on extrinsic use.

 

Applicant argues that the purchasers are sophisticated, but does not back this assertion with evidence. Even if purchasers are sophisticated or knowledgeable in a particular field, it does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011).  Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser.  In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).

 

This is especially true in this case, where the marks are identical in part for legally identical goods.

 

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

 

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 response to this nonfinal Office action.    

 

 

 

/Jeanie H. Lee/

Examining Attorney

Law Office 105

571-272-6110

jeanie.lee@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 July 24, 2020 for

U.S. Trademark Application Serial No. 88329621

 

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. 

 

 

/Jeanie H. Lee/

Examining Attorney

Law Office 105

571-272-6110

jeanie.lee@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 July 24, 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.”