UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 6/27/2019

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

Trademark Act Section 2(d) Refusal to Register – Likelihood of Confusion:

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark(s) in U.S. Registration No(s). 5321132, 5742366, 5380813, 5443468, 5401819, 5380812, 4960624, 4837578, 4778730, 4703634, 4328797, 3984444, 3984443, 4589493, 4589492, 4693789, 5532391, 3865993, 2970422, 2972886, 2894615, 3038157, and 4517247.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration(s).

 

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 or 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).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) 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 of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 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 of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

 

Regarding the issue of likelihood of confusion, all circumstances surrounding the sale of the goods and/or services are considered.  These circumstances include the marketing channels, the identity of the prospective purchasers, and the degree of similarity between the marks and between the goods and/or services.  See Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386 (C.C.P.A. 1973); TMEP §1207.01.  In comparing the marks, similarity in any one of the elements of sound, appearance or meaning may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).  In comparing the goods and/or services, it is necessary to show that they are related in some manner.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); TMEP §1207.01(a)(vi).

 

The Marks are Similar:

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression.  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).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

 

The marks are compared in their entireties under a Trademark Act Section 2(d) analysis.  See TMEP §1207.01(b).  Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); see TMEP §1207.01(b)(viii), (c)(ii).

 

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).

 

Here, the marks of applicant and registrant(s) are confusingly similar in appearance, sound, meaning and commercial impression.  Applicant’s proposed mark consists of the wording “ONE DRILL.”  The mark(s) of registrant(s) consist(s) of the wording “ONE” and “1,” some with design elements and/or stylization.

 

Each of the marks thus contains the dominant, initial element “ONE.”  Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

Moreover, with regard to the mark “1” as compared with applicant’s mark, the wording “ONE” will be perceived as equivalent to and an alternative form of the registered mark.

 

In addition, the additional wording in applicant’s mark does not distinguish it.  As explained below, applicant must disclaim this additional word “DRILL” because it is merely descriptive of the goods and/or services.  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).

 

Applicant also has merely added this wording to the registered marks.  Adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

Finally, the design elements and stylization in the registrations also does not distinguish them from applicant’s mark.  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)).

 

The Goods/Services are Related:

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

 

If the goods and/or services of the respective parties are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

Here, applicant’s goods and services are:

 

International Class 5 – alloys of precious metals for dental purposes; dental amalgams; dental cements; dental impression materials; medicines for dental purposes; medicines for human purposes; molding wax for dentists; porcelain for dental prostheses; rubber for dental purposes; teeth filling material

 

International Class 9 – computer programs; computer software applications, downloadable; connected bracelets; downloadable image files; electronic notice boards; electronic publications, downloadable; encoded identification bracelets, magnetic; smart cards; optical discs; teeth protectors

 

International Class 10 – artificial teeth; dental burs; dental apparatus and instruments; dental apparatus, electric; dentures; diagnostic apparatus for medical purposes; medical apparatus and instruments; orthodontic appliances; pins for artificial teeth; teeth protectors for dental purposes

 

International Class 16 – bags of paper or plastics, for packaging; books; flyers; graphic prints; handbooks; periodicals; photographs; printed matter; printed publications; writing instruments

 

International Class 35 – administrative processing of purchase orders; advertising; rental of advertising space; auctioneering; business management assistance; commercial or industrial management assistance; commercial information and advice for consumers; commercial administration of the licensing of the goods and services of others; demonstration of goods; dissemination of advertising matter; import-export agency services; marketing; negotiation and conclusion of commercial transactions for third parties; on-line advertising on a computer network; provision of an on-line marketplace for buyers and sellers of goods and services; organization of trade fairs for commercial or advertising purposes; presentation of goods on communication media, for retail purposes; relocation services for businesses; retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies

 

International Class 41 – club services; arranging and conducting of colloquiums; on-line publication of electronic books and journals; providing on-line electronic publications, not downloadable; organization of competitions; organization of exhibitions for cultural or educational purposes; publication of books; arranging and conducting of seminars; educational services; vocational guidance

 

International Class 44 – dentistry services; health care; health counseling; hospital services; medical clinic services; nursing, medical; orthodontic services; pharmacy advice; therapy services; visagists' services

 

The goods and services of registrant(s) are:

 

International Class 42 – Providing a website featuring non-downloadable software for content management that allows users to easily edit and manage websites, track web statistics, and conduct email campaigns for use in the funeral services industry; all of the aforementioned services exclude the field of advertising services

 

International Class 9 – Downloadable electronic instructional and educational publications, namely, electronic journals, electronic newsletters, interactive instructional materials, education course materials, and test preparation materials in the fields eye care and ophthalmology; downloadable MP3 files, MP3 recordings, on-line discussion board posts, webcasts, webinars and podcasts featuring information in the fields of eye care and ophthalmology

 

International Class 44 – Consulting services in the field of medical care

 

International Class 42 – Computer software development in the nature of mobile applications in the field of healthcare

 

International Class 38 – Mobile media services in the nature of electronic transmission of medical records

 

International Class 42 – Computer software consulting services in the fields of medical software deployment and deployment of software relating to healthcare and patient care

 

International Class 9 – Computer software platforms for use by medical professionals to capture and organize patient information; downloadable computer application software for mobile media, namely, software for use by medical professionals to capture and organize patient information; downloadable medical patient monitoring software

 

International Class 9 – downloadable computer software for storing and delivering advertisements to global computer networks, wireless networks and mobile websites, applications and devices; downloadable computer software that enables the user to manage mobile advertising campaigns; computer software and hardware for disseminating advertising for others

 

International Class 35 – online advertising and promotional services; dissemination of advertising for others via global computer networks, wireless networks, and mobile websites, applications, and devices; placing advertisements for others on global computer networks, wireless networks, and mobile websites, applications and devices using specialized computer software; business marketing services in the nature of developing advertisements distributed via global computer networks, wireless networks, and mobile websites, applications, and devices

 

International Class 42 – providing temporary use of online non-downloadable software for use in developing and delivering advertisements via global computer networks and mobile websites, applications and devices and for tracking, analyzing and reporting on advertisement performance

 

International Class 16 – Decals; Printed emblems

 

International Class 9 – Computer software platform for use in the construction industry for estimating the costs of and bidding on construction projects, operations management and support, management of construction projects, scheduling and dispatching workers, equipment, materials, and other resources on construction projects, for tracking, analyzing, and comparing actual costs, time spent, and performance against original bid numbers or estimates, and for managing and maintaining construction equipment and vehicle fleets

 

International Class 44 – Dentist services

 

International Class 9 – Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling, checking and supervising, life-saving and teaching apparatus and instruments, namely, optical drives, cameras; apparatus for recording, transmission or reproduction of sound or images, namely, video recorders, mp3 players, scanners; blank magnetic data carriers, recording discs; automatic vending machines and parts for coin-operated apparatus, namely, coin changers; cash registers, calculating machines, namely, calculators, data processing equipment, namely, data processors and computers; fire-extinguishing apparatus, in the nature of fire extinguishers; all specifically excluding batteries and battery chargers

 

International Class 9 – Computer Services, Namely, Providing a Web-Based System and Online Portal Featuring On-Line Non-Downloadable Software that Enables Users to Access Training, Educational, and Instructional Materials in the Fields of Eye Care and Ophthalmology

 

International Class 41 – Non-Downloadable Electronic Instructional and Educational Publications, Namely, Electronic Journals, Electronic Newsletters, Interactive Instructional Materials, Coursework, and Test Preparation in the Fields of Eyecare and Ophthalmology; Providing a Website Featuring Non-Downloadable Prerecorded Digital Media, namely, Videos and Podcasts in the Fields of Eyecare and Ophthalmology

 

International Class 44 – Orthopedic surgery; neurosurgery; clinical services in the diagnosis, treatment, and health of the nervous system

 

International Class 9 – Computer hardware, and peripheral apparatus and instruments for use with computers; computer software and programs for improving customer communications and interactions and the customer experience; computer software that provides web-based access to applications and services through a web operating system or portal interface; computer software for use in establishing and accessing online desktop services and application rental services; computing devices that provide software for transmitting data, graphics, audio or video over electronic communications networks, computer hardware device for use in accessing computer software applications of others; computing device, namely, personal computers and file servers for hosting, managing, developing, and maintaining applications, software, files, and databases for others via a virtual desktop available via a network; computer software for use in storing, managing, tracking and analyzing data in the fields of marketing, promotion, sales, customer information management, customer support and service and employee efficiency, collaborative intra-company and inter-company exchange of such data, maintaining statistics and generating reports concerning such data, providing customized on-line information and resources relevant to the customers' business; computer software applications downloadable to PDAs and mobile devices to enable access to and the editing of document templates, the building of data models and the integration of said software applications with social networks, all for improving customer communications and interactions and the customer experience; computer programs recorded on data, namely, for use in improving customer communications and interactions and the customer experience; recording media bearing recordings in sound and/or visual form featuring music and spoken-word content for use in improving customer communications and interactions and the customer experience; pre-recorded audio and video discs form featuring music and spoken-word content for use in improving customer communications and interactions and the customer experience; blank CD-ROMs for sound or video recording; parts and fittings for all the aforesaid goods; all of the aforesaid relating to computer software for improving customer communications and interactions and the customer experience

 

International Class 42 – Computer consultancy and advisory services; consulting services in the field of cloud computing; consulting services in the field of software as a service (SAAS); consulting services in the field of identification, support, and implementation of computer-based information systems for businesses; consulting in the field of virtualization technologies for enterprises and businesses; consulting in the field of IT project management; consulting in the field of information technology; computer services, namely, remote management of the information technology (IT) systems of others; computer services, namely, remote and on-site management of cloud computing systems and applications for others; computer services, namely, remote and on-site management of the information technology (IT) cloud computing systems of others; computer services, namely, remote management of computer applications for others; computer programming services; consultancy and advisory services relating to the use and installation of software, or relating to the use and installation of computer programmes, installation and maintenance of computer software and computer programmes, computer software design, development and updating services; design of bespoke computer software and programmes for improving customer communications and interactions and the customer experience; the provision of computer software engineers and computer programmers to customers to assist in the repair, maintenance and use of computer software and programmes; providing temporary use of non-downloadable application software for maintaining, updating, searching, and retrieving information via a global computer network; hosting of digital content of others on the Internet; hosting the web sites of others on a computer server for a global computer network; computer project management services; technical support services relating to the use and application of computer software and programmes; updating of computer software; updating and maintenance of computer software; updating of computer software for others; updating of computer programs for third parties; updating of computer software relating to computer security and prevention of computer risks; updating websites for others; technology advice provided to Internet users by means of a support hotline; technical support services, namely, remote and onsite infrastructure management services for monitoring, administration and management of public and private cloud computing IT and application systems; computer services, namely, integration of private and public cloud computing environments; technical support services, namely, remote administration and management of in-house and hosted datacenter devices, databases and software applications; technical support services, namely, installation, administration, and troubleshooting of web and database applications; technical support services, namely, migration of datacenter, server and database applications; technical support services, namely, 24x7 monitoring of network systems, servers and web and database applications and notification of related events and alerts; technical support services, namely, technical administration of servers for others and troubleshooting in the nature of diagnosing server problems; technical support, namely, monitoring of network systems; technical support, namely, providing back-up computer programs and facilities; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; technical support services, namely, troubleshooting of computer software problems; technical consulting services in the fields of datacenter architecture, public and private cloud computing solutions, and evaluation and implementation of internet technology and services; remote online backup of computer data; remote computer backup services; remote computer network technical monitoring and software maintenance services; recovery of computer data; providing virtual computer systems and virtual computer environments through cloud computing; planning, design and implementation of virtualization technologies for enterprises and businesses; periodic upgrading of computer software for others; monitoring the computer systems of others for technical purposes and providing back-up computer programs and facilities; data encryption and decoding services; data encryption services; data migration services; data mining; computer programming services for data warehousing; database design and development; database development services; installation, maintenance and repair of computer networks and computer systems consisting of software; installation, maintenance and repair of cell phone related software; installation, maintenance and repair of software for computer systems; installation, repair and maintenance of computer software; providing information in the field of telecommunications software over computer networks, wireless networks and global communication networks; information, advisory and consultancy services relating to the aforesaid

 

International Class 9 – Spectacles; sunglasses; spectacles for sporting activities; spectacle lenses; spectacle mounts, namely, the supports of the glass used in spectacles sold as integral component parts of spectacles; spectacle frames; spectacle cases; chains and cords for spectacles; sports helmets; protective helmets; helmets for motorcyclists

 

International Class 16 – BIBLES

 

International Class 9 – motorcycle helmets

 

International Class 10 – Ophthalmic and ophthalmic neurosurgical instruments, tools and devices namely, ophthalmic calipers, eyelid clamps, muscle clamps, iris retractor clips, orbital compressors and depressors, lachrymal dilators, ophthalmic forceps, introducer sheres, lachrymal probes, trabeculotomy probes, ophthalmic spuds, trabeculotomes and ophthalmic manual trephines

 

International Class 16 – printed materials, namely, adhesive stickers and decals

 

International Class 16 – Paper, namely copy paper, printing paper and art paper

 

With respect to applicant’s and registrant’s goods and/or services, the question of likelihood of confusion is determined 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 Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

Absent restrictions in an application and/or registration, the identified goods and/or services 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)).  Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described.  See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).   

 

In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers.  Therefore, it is presumed that these goods and/or services travel in all normal channels of trade, and are available to the same class of purchasers.

 

Applicant also should note that many of its broad goods and services could include the more specific goods and services of applicant.  For example, its software could include the more specific types of software in the registrations, its printed materials could include the more specific books and printer matter from the publications, its online publications could include the more narrow publications from the registrations, its medical services could include the medical services from the registrations, its optical discs could be blank just as the ones from the registrations, books could include bibles, , etc.

Applicant also offers some of the same services as registrants, such as advertising services.

 

Moreover, the attached copies of printouts from the USPTO X-Search database show third-party registrations of marks used in connection with the same or similar goods and/or services as those of applicant and registrant(s) in this case, and they have probative value to the extent that they serve to suggest that the goods and/or services listed therein, namely, dental services and the International Class 5 and International Class 10 goods from the application, the International Class 35 services from the registrations and application, the International Class 16 goods from the registrations and application, the International Class 44 services from the application and registrations, the International Class 41 services from the application and registrations, and the International Class 9 goods from the application and registrations, are of a kind that may emanate from a single source.  In re Infinity Broad. Corp.,60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).  Thus, such goods and/or services are likely to travel in the same channels of trade, likely to be displayed to consumers under circumstances giving rise to a likelihood of confusion, and likely to be perceived as emanating from the same source.

 

Viewing all of the factors together, based on the similarity of the registered mark(s) to the proposed mark and the similarity of the goods and/or services, confusion as to source is likely.  Purchasers familiar with the mark(s) of the cited registration(s), upon seeing applicant’s mark, would be likely to conclude that applicant’s goods and/or services emanated from the same source, or that applicant’s goods and/or services were associated with and/or sponsored by the registrant(s).  Accordingly, registration is refused due to the likelihood of confusion.

 

Please note that 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(s) 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(s).  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, 1025 (Fed. Cir. 1988).

 

In addition, please note the following prior pending applications, which if they register may present additional bars to registration of applicant’s mark.

 

Prior Pending Applications:

 

The filing dates of pending U.S. Application Serial Nos. 88460556, 88361286, 88176135, 88152079, 87866520, 87364736, 87632825, 87076933, 86845952, 86250420, 86250419, 86206041, 86975482, and 85737290 precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced applications.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications.  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

Responding to Refusal to Register:

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Disclaimer:

 

Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).

 

In this case, applicant must disclaim the wording “DRILL” because it is not inherently distinctive.  These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a). 

 

As shown by the attached definitions, “DRILL” means a tool for making holes in things, such as a dental drill for drilling teeth.  Applicant’s goods and services this either are or they relate to dental drills.  Thus, this wording directly describes the goods and services and the subject matter thereof.

 

Applicant may respond to this issue by submitting a disclaimer in the following format: 

 

No claim is made to the exclusive right to use “DRILL” apart from the mark as shown. 

 

For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage. 

 

Identification:

 

The wording in the identification is indefinite and must be clarified, as indicated below.  See TMEP §§1402.01 and 1402.03.

 

Applicant may adopt the following identification, if accurate.  Suggestions are in boldface italics, and the matter in braces { } or brackets [ ] is explanatory material:

 

International Class 5 – alloys of precious metals for dental purposes; dental amalgams; dental cements; dental impression materials; medicines for dental purposes; medicines for human purposes, namely, for dental purposes; molding wax for dentists; porcelain for dental prostheses; rubber for dental purposes; teeth filling material

 

International Class 9 – recorded computer programs for {specify}; computer software applications, downloadable, for {specify}; connected bracelets; downloadable image files containing {indicate content or subject matter}; electronic notice boards; electronic publications, downloadable, namely, {specify books, etc.} in the field of {specify}; encoded identification bracelets, magnetic; pre-recorded smart cards featuring {specify}; pre-recorded optical discs featuring {specify}; teeth protectors, namely, mouth guards for sports

 

International Class 10 – artificial teeth; dental burs; dental apparatus and instruments for use in {specify}; dental apparatus, electric, for use in {specify}; dentures; diagnostic apparatus for medical purposes, for diagnosing {specify}; medical apparatus and instruments, for use in {specify}; orthodontic appliances; pins for artificial teeth; teeth protectors for dental purposes

 

International Class 16 – bags of paper or plastics, for packaging; books in the field of {specify}; informational flyers featuring {specify}; graphic prints; handbooks in the field of {specify}; periodicals in the field of {specify}; photographs; printed matter, namely, {books, etc.} in the field of {specify}; printed publications, namely, {books, etc.} in the field of {specify}; writing instruments

 

International Class 35 – administrative processing of purchase orders; advertising services; rental of advertising space; auctioneering; business management assistance; commercial and industrial management assistance; commercial information and advice for consumers in the choice of products and services; commercial administration of the licensing of the goods and services of others; demonstration of goods; dissemination of advertising matter; import-export agency services; marketing services; negotiation and conclusion of commercial transactions for third parties; on-line advertising on a computer network; provision of an on-line marketplace for buyers and sellers of goods and services; organization of trade fairs for commercial or advertising purposes; presentation of goods on communication media, for retail purposes; relocation services for businesses; retail and wholesale store services featuring pharmaceutical, veterinary and sanitary preparations and medical supplies

 

International Class 41 – membership club services in the nature of providing discounts to members in the field of dentistry; arranging and conducting of educational colloquiums in the field of dentistry; on-line publication of electronic books and journals; providing on-line electronic publications, not downloadable, namely, {books, etc.} in the field of dentistry; organization of competitions in the field of {specify}; organization of exhibitions for cultural or educational purposes; publication of books; arranging and conducting of seminars in the field of dentistry; educational services, namely, {specify classes, etc.} in the field of dentistry; vocational guidance

 

International Class 44 – dentistry services; health care; health counseling; hospital services; medical clinic services; nursing, medical; orthodontic services; pharmacy advice, namely, advice regarding pharmaceuticals; therapy services, namely, {specify}; visagists' services, namely, cosmetology services

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.  An applicant may amend an identification of goods and/or services only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.

 

 

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.  

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.

 

 

 

/James W. MacFarlane/

Examining Attorney

Law Office 104

(571) 270-1512 (phone)

(571) 270-2512 (fax)

james.macfarlane@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/27/2019 FOR U.S. APPLICATION SERIAL NO. 88380458

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 6/27/2019 (or sooner if specified in the Office action).  A response transmitted through the Trademark Electronic Application System (TEAS) must be received before midnight Eastern Time of the last day of the response period.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.