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
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Correspondence Address: INNOVATION CAPITAL LAW GROUP, LLP |
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Applicant: U.S. Polymers, Inc.
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Reference/Docket No. USP1-TMA47-1
Correspondence Email Address: |
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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:
See TMEP §713.02.
Refusal obviated. The following refusal is obviated:
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)).
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)).
Moreover, the attached Internet evidence consists of screenshots from Northern Tool + Equipment, Durasheds, Menards, Lowe’s and The Home Depot. See http://www.northerntool.com/shop/tools/category_tarps-canopies-shelters+sheds-outdoor-storage-shelters, http://www.northerntool.com/shop/tools/category_tarps-canopies-shelters+sheds-outdoor-storage-shelters+metal-sheds-storage-buildings, http://www.northerntool.com/shop/tools/category_clothing-footwear+clothing-accessories+hats-caps, http://www.northerntool.com/shop/tools/category_furniture-office, http://www.northerntool.com/shop/tools/category_lawn-garden+outdoor-furniture, http://www.northerntool.com/shop/tools/product_200718294_200718294, http://durasheds.com/collections/metal-sheds, http://durasheds.com/collections/enclosures, http://durasheds.com/collections/patio-garden/products/duramax-9ft-x-17ft-palladium-metal-car-shelter-silver, http://durasheds.com/collections/outdoor-furniture, http://www.menards.com/main/outdoors/sheds-accessories/c-9482.htm, http://www.menards.com/main/grocery-home/clothing-accessories/headwear/c-7087.htm, http://www.menards.com/main/grocery-home/decorative-accents/c-6921.htm, http://www.menards.com/main/grocery-home/furniture/c-7707.htm, http://www.menards.com/main/outdoors/grills-outdoor-cooking/grilling-tools/c-1461078035988.htm, http://www.menards.com/main/outdoors/grills-outdoor-cooking/grilling-tools/backyard-creations-trade-3-piece-grilling-tool-set/m40023/p-1471978717021-c-1461078035988.htm, http://www.menards.com/main/grocery-home/menards-collectibles/menards-treasures/menards-reg-coffee-mug/6221030/p-1444433533357-c-13320.htm, http://www.menards.com/main/tools-hardware/hand-tools/specialty-hand-tools/felo-ergonic-bottle-opener/0715762405/p-1475244647877-c-1486130003872.htm, http://www.menards.com/main/building-materials/landscaping-materials/the-project-store/landscaping-projects/benches/solid-bench-with-back-project-material-list-2-11-x-6-1-x-1-3-3-4/1986163/p-1444422131638-c-13093.htm, http://www.lowes.com/search?searchTerm=metal+sheds&catalog=4294612525, http://www.lowes.com/c/Gazebos-pergolas-canopies-Patio-furniture-Outdoors, http://www.lowes.com/c/Patio-furniture-Outdoors, http://www.lowes.com/pd/CRAFTSMAN-Red-Manual-Bottle-Opener/1000595611, http://www.lowes.com/pd/Ninja-Insulated-Mug/1000127443, http://www.lowes.com/pd/Weber-Original-Grilling-Tongs/1000343167, http://www.lowes.com/pd/Hershey-s-2-Pack-Stainless-Steel-2-Prong-Fork/50329069, http://www.lowes.com/c/Wall-art-decor-Home-decor, http://www.lowes.com/pd/The-Memory-Company-New-York-Jets-Team-Picture-Frame-Common-4-in-x-6-in-9-in-x-6-5-in/1001034954, http://www.lowes.com/pd/Brainerd-Beaded-2-Gang-Brushed-Satin-Pewter-Double-Standard-Wall-Plate/1005241, http://www.homedepot.com/, http://www.homedepot.com/p/3-Embers-Stainless-Steel-4-Piece-Grilling-Tool-Set-with-Pakkawood-Handles-ACC7405AS/303342032, http://www.homedepot.com/p/Amici-Home-If-My-Dog-Doesn-t-Like-You-20-oz-Black-White-Ceramic-Coffee-Mug-7CW028R/307617568, http://www.homedepot.com/p/BergHOFF-Eclipse-6-in-Stainless-Steel-Bottle-opener-3700060/306706408, http://www.homedepot.com/s/hats?NCNI-5, http://www.homedepot.com/p/Hampton-Bay-Ascher-1-Duplex-Outlet-Plate-Oil-Rubbed-Bronze-Stamped-149DDBHB/204839735 and http://www.homedepot.com/b/Storage-Organization-Sheds-Garages-Outdoor-Storage/N-5yc1vZbste. This evidence establishes that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, applicant’s goods and the goods in the prior filed application 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). Furthermore, generally, the greater degree of similarity between the marks, the lesser the degree of similarity between the goods of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). Therefore, applicant’s goods and the goods in the prior filed application are considered related for likelihood of confusion purposes.
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