Suspension Letter

DURAMAX

U.S. Polymers, Inc.

U.S. Trademark Application Serial No. 88357157 - DURAMAX - USP1-TMA47-1

To:	U.S. Polymers, Inc. (processing@icaplaw.com)
Subject:	U.S. Trademark Application Serial No. 88357157 - DURAMAX - USP1-TMA47-1
Sent:	December 31, 2019 09:20:23 PM
Sent As:	ecom122@uspto.gov
Attachments:	Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

U.S. Application Serial No. 88357157

Mark: DURAMAX

Correspondence Address:

Vic Lin

INNOVATION CAPITAL LAW GROUP, LLP

19800 MACARTHUR BLVD., SUITE 280

IRVINE CA 92612

Applicant: U.S. Polymers, Inc.

Reference/Docket No. USP1-TMA47-1

Correspondence Email Address:

processing@icaplaw.com

SUSPENSION NOTICE

No Response Required

Issue date: December 31, 2019

The application is suspended for the reason specified below. See 37 C.F.R. §2.67; TMEP §§716 et seq.

The pending application below has an earlier filing date or effective filing date than applicant’s application. If the mark in the application below registers, the USPTO may refuse registration of applicant’s mark under Section 2(d) because of a likelihood of confusion with the registered mark. 15 U.S.C. §1052(d); see 37 C.F.R. §2.83; TMEP §§1208.02(c). Action on this application is suspended until the prior-filed application below either registers or abandons. 37 C.F.R. §2.83(c). Information relevant to the application below was sent previously in the Office Action dated June 6, 2019 at p. 17-19.

- U.S. Application Serial No. 87961533

Requirement resolved. The following requirement is satisfied:

Identification of Goods Requirement

See TMEP §713.02.

Refusal obviated. The following refusal is obviated:

Section 2(d) Refusal – Likelihood of Confusion

See Id.

Please note, applicant’s arguments were considered and found unpersuasive for the following reasons set forth below.

Applicant’s Arguments

Applicant primarily argues the prior filed application contains goods in six classes, but none are in class 006, the only class under which applicant’s goods are categorized. See Response to Office Action dated December 5, 2019 at p. 2. However this is unpersuasive, because the fact that the Office classifies goods in different classes does not establish that the goods are unrelated under Trademark Act Section 2(d). See TMEP §1207.01(d)(v). The determination concerning the proper classification of goods is a purely administrative determination unrelated to the determination of likelihood of confusion. In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (citing Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 975, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993)).

Applicant has submitted electronic copies of third-party registrations for marks containing the wording DURAMAX to support the argument that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection. These registrations appear to be for goods that are predominantly different from and/or unrelated to those identified in applicant’s application. See Response to Office Action dated December 5, 2019 at p. 2-3 & 8-28.

The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods. See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence of widespread third-party use of similar marks with similar goods “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003).

However, evidence comprising third-party registrations for similar marks with different or unrelated goods, as in the present case, has “no bearing on the strength of the term in the context relevant to this case.” See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017) (citing In re i.am.symbolic, llc, 866 F.3d at 1328, 123 USPQ2d at 1751). Thus, these third-party registrations submitted by applicant are insufficient to establish that the wording DURAMAX is weak or diluted.

Applicant primarily argues the purchasers of applicant’s goods are sophisticated, because a storage shed is a large ticket item and purchasers are careful when making this purchase; and therefore, purchasers of applicant’s goods are not likely to be confused as to the source of applicant’s goods when they see the same mark on General Motor’s goods in the prior filed application. See Response to Office Action dated December 5, 2019 at p. 5. However this is unpersuasive, because the fact that purchasers are sophisticated or knowledgeable in a particular field 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).

Applicant primarily argues the goods are not related, because applicant’s goods have nothing to do with the goods in the prior filed application, the USPTO found no likelihood of confusion between the prior filed application and applicant’s registration with Registration No. 2549634 for nearly the same goods as in the application except in non-metallic form and purchasers are likely to see the goods in the prior filed application as promotional goods connected with General Motor’s DURAMAX engines. See Response to Office Action dated December 5, 2019 at p. 4-7. However this is unpersuasive, because prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).

Suspension process. The USPTO will periodically check this application to determine if it should remain suspended. See TMEP §716.04. As needed, the trademark examining attorney will issue a letter to applicant to inquire about the status of the reason for the suspension. TMEP §716.05.

No response required. Applicant may file a response, but is not required to do so.

/Rebecca Lee/

Examining Attorney

Law Office 122

(571) 272 - 7809

Rebecca.Lee1@uspto.gov

Suspension Letter [image/jpeg]

U.S. Trademark Application Serial No. 88357157 - DURAMAX - USP1-TMA47-1

To:	U.S. Polymers, Inc. (processing@icaplaw.com)
Subject:	U.S. Trademark Application Serial No. 88357157 - DURAMAX - USP1-TMA47-1
Sent:	December 31, 2019 09:20:23 PM
Sent As:	ecom122@uspto.gov
Attachments:

United States Patent and Trademark Office (USPTO)

USPTO OFFICIAL NOTICE

Office Action (Official Letter) has issued

on December 31, 2019 for

U.S. Trademark Application Serial No. 88357157

Your trademark application has been reviewed by a trademark examining attorney. As part of that review, the assigned attorney has issued an official letter. Please follow the steps below.

(1) Read the official letter. No response is necessary.

(2) Direct questions about the contents of the Office action to the assigned attorney below.

/Rebecca Lee/

Examining Attorney

Law Office 122

(571) 272 - 7809

Rebecca.Lee1@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).

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.”