UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88398149
MARK: ANVIL
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Home Depot Product Authority, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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 issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL, IN PART – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES TO CLASS 8 ONLY.
Applicant’s mark is ANVIL (in standard character form) for, in relevant part, “Drywall tools namely, scoops for moving drywall from buckets, rasp blades, drywall repair clips, drywall cutters, drywall roll lifters, drywall tape reels, drywall brushes, drywall corner beads, drywall hawks, drywall circle cutters; drywall repair patches; mud pans; mixing paddles; hand mixers; mixers for electric tools; pole sanders; hand sanders; hopper guns; replacement nozzles for hopper guns; texture brushes; sanding discs; grippers for carrying panels; handles for hand-operated hand tools” in International Class 8.
The registered marks are:
Standard for Likelihood of Confusion
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
In the present case, the marks are similar in appearance in that they are comprised of the identical word ANVIL. Here, applicant’s mark is ANVIL and the mark is registration No. 5513454 is ANVIL. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. Id.
With respect to the marks in registration Nos. 5035320 and 5057911, the marks are identical in part as to ANVIL where applicant’s mark is incorporated in whole in the registered marks. Incorporating the entirety of one mark within another 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 Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); 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 LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
The likelihood of confusion is not obviated even though the registered marks include the additional wording “BLADESMITHS” and “BLADESMITHS PREMIUM STEEL”. As noted in the registrations, this wording has been disclaimed. 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). As such, “ANVIL” is rendered the dominant portion of the registered marks, which is identical to the applied-for mark.
Lastly, the likelihood of confusion is not obviated even though the mark in registration No. 5057911 is in stylized form featuring an anvil design and stylized wording. 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)). As such, the wording “ANVIL BLADESMITHS PREMIUM STEEL”, and “ANVIL” in particular as the first portion of the wording, is rendered the dominant portion.
Moreover, the wording “ANVIL” on the anvil design are the most prominent features of the registered mark, thus reinforcing “ANVIL” as the dominant portion of the mark most likely to be impressed upon the mind and memory of consumers. As such, consumers are likely to refer to both applicant’s and registrant’s goods as simply “the anvil goods”.
Overall, the marks are identical as to “ANVIL”, the sole or dominant portion of the marks. Thus, the marks are confusingly similar.
Relatedness of the Goods
Dewalt offers registrant’s pocket and folding knives, as well as applicant’s drywall cutters being jab saws and cut-out tools, mud pans, mixing paddles and mixers for electric tools, sanding discs, and handles for hand-operated hand tools;
Klein offers registrants’ scissors and shears and pocket and folding knives, as well as applicant’s drywall cutters being jab saws;
Stanley offers registrants’ scissors and shears and pocket and folding knives, as well as applicant’s rasp blade and drywall cutter being jab saws;
Westward offers registrants’ shears and folding knives, as well as applicant’s rasp blades, drywall cutters being jab saws, drywall hawks, mixing paddles and mixers for electric tools, mud pans, hand sanders, pole sanders, sanding discs, and handles for hand-operated hand tools;
Hyde offers registrant’s shears, as well as applicant’s rasp blades, drywall cutters being jab saws, drywall hawks, mixing paddles and mixers for electric tools, mud pan, hand sanders, pole sanders, hopper guns, texture brushes, sanding discs, and drywall tape reels; and
Wal-Board offers registrant’s folding knives, as well as applicant’s rasp blades, drywall cutters being jab saws, drywall hawks, drywall circle cutters, mixing paddles and mixers for electric tools, hand mixers, mud pan, hand sanders, pole sanders, hopper guns, texture brushes, drywall tape reels, and handles for hand-operated hand tools.
See attached evidence. Thus, applicant’s and registrants’ goods 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).
In sum, upon encountering the similar marks of the applicant and registrants on the closely related goods concerned in this case, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source or are connected in some way. Based on this likelihood of source confusion, registration is refused under Section 2(d) of the Trademark Act.
ADVISORY: Response Options
1) Deleting the class to which the refusal pertains; or
2) Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition in the classes to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
Applicant must also respond to the requirements set forth below.
IDENTIFICATION OF GOODS – CLARIFICATION REQUIRED
As indicated by the suggestions in bold font below, certain wording in the identification of goods in International Class 8 must be clarified because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it does not make clear what the goods are. Further, this wording could identify goods in more than one international class. Specifically, “drywall cutters”, “mixing paddles”, and “sanding discs” are classified in International Class 7 if they are used as or in conjunction with power-operated tools, or Class 8 if they are used as or in conjunction with hand-operated tools. For example, mixing paddles for use with power drills are in Class 7, while mixing paddles for use with hand-operated hand drills are in Class 8. In addition, “drywall corner beads” is too broad and could encompass “drywall corner beads of metal” in Class 6, as well as “drywall corner beads not of metal” in Class 19.
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods may not later be reinserted. TMEP §1402.07(e).
Applicant may substitute the following wording, if accurate (changes noted in bold font and strikethrough, comments in bold italics):
International Class 6:
Drywall repair clips of metal; Drywall corner beads of metal {moved from Class 8}; metal drywall mud pans {moved from Class 8}
International Class 7:
Drywall cutters being power-operated saws {moved from Class 8}; mixing paddles for use with power drills {moved from Class 8}; mixers for electric tools, namely, power drill mixer attachment {moved from Class 8}; power-operated hopper spray guns {moved from Class 8}; replacement nozzles for hopper spray guns {moved from Class 8}; sanding discs for power-operated sanders {moved from Class 8}
International Class 8:
Drywall hand tools namely, scoops for moving drywall from buckets, rasp blades, drywall repair clips {duplicate deleted}, drywall cutters being hand saws, drywall roll lifters, drywall tape reels, drywall brushes being hand tools for putting a
finish on drywall, drywall corner beads {moved to Classes 6 and 19}, drywall hawks, drywall circle cutters; drywall repair patches
{moved to Class 19}; mud pans {moved to Class 6}; mixing paddles for use with
hand-operated hand drills; drywall mud mixers being hand tools; mixers for electric tools {moved to Class 7}; pole sanders being hand tools; hand sanders being hand tools; hopper guns {moved to Class 7}; replacement nozzles for hopper guns {moved to Class 7}; texture brushes being hand tools for
putting a finish on drywall; sanding discs for non-electric, hand-operated sanders; grippers for carrying panels being panel carriers; handles for
hand-operated hand tools
International Class 19:
Adhesive wall patches for drywall repair; Drywall corner beads not of metal {moved from Class 8}; drywall repair patches {moved from Class 8};
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. See TMEP §1402.04.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least four classes; however, applicant submitted fees sufficient for only three classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
RESPONDING TO THIS OFFICE ACTION
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
ADVISORY – TEAS PLUS AND TEAS RF REQUIREMENTS
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.
/Luz Adorno/
Trademark Examining Attorney, Law Office 111
United States Patent and Trademark Office
(571) 272-4902
Luz.Adorno@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.