To: | HydraForce, Inc. (jberman@taftlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88411421 - SOLOSEAL - DHD06-00202 |
Sent: | February 14, 2020 08:15:14 AM |
Sent As: | ecom130@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88411421
Mark: SOLOSEAL
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Correspondence Address: TAFT STETTINIUS & HOLLISTER LLP 111 EAST WACKER DRIVE, SUITE 2800
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Applicant: HydraForce, Inc.
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Reference/Docket No. DHD06-00202
Correspondence Email Address: |
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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: February 14, 2020
On 07/15/19, action on this application was suspended pending the disposition of U.S. Application Serial No. 79225640. The referenced prior-pending application has since registered. Therefore, registration is refused as follows. Applicant must respond timely and completely to the issue 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 – 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 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. 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 and differences in the marks.”); TMEP §1207.01.
Comparison of the Marks in General
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).
Comparison of the Goods in General
Analysis of the Marks
Applicant’s mark, SOLOSEAL, is confusingly similar to the earlier filed mark, SOLO, in meaning or connotation and overall commercial impression. Both marks feature the identical wording SOLO with the only difference between the marks being applicant’s inclusion of generic wording.
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); TMEP §1207.01(b)(viii), (c)(ii). Wording that is descriptive of or generic for a party’s goods (such as SEAL in applicant’s mark as discussed below) 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 applicant’s identification of goods include seals, the wording SEAL is clearly descriptive/generic and its inclusion in the mark is not the dominant feature of the mark.
In this case, the marks share the identical wording SOLO which is the dominant and initial portion or only of each of the marks. 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); TMEP §1207.01(b)(ii)-(iii).
Applicant has added the descriptive/generic wording SEAL to the earlier filed mark. 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.
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 this case, the marks are identical in part and thus a consumer encountering the mark SOLOSEAL in connection with applicant’s goods will incorrectly believe that the goods originate from the same source as the earlier filed SOLO goods.
Analysis of the Goods
Applicant’s goods are:
Hydraulic cartridge valves and hydraulic manifolds for use in agricultural and off-highway machinery; Seals and seal kits for hydraulic cartridge valves used in agricultural and off-highway machinery; Seals and seal kits for hydraulic manifolds used in agricultural and off-highway machinery
Registrant’s goods include among other things:
Agricultural machines, namely, tillers, threshers, and manure spreaders; machines for earthworks, oil and gas extraction, motor and engines except for land vehicles, namely, motors and engines for petrol-operated and electrical power saws, petrol-operated and electrical trimmers, lawn mowers, bar mowers, tillers, petrol-operated and electrical hedge-trimmers and scarifiers; machines coupling and transmission components except for land vehicles; agricultural implements other than hand-operated, namely, petrol-operated and electrical power saws, petrol-operated and electrical trimmers, lawn mowers, bar mowers, tillers, petrol-operated and electrical hedge-trimmers and scarifiers; motorized forestry equipment, agricultural equipment and horticultural equipment, namely, chainsaws, threshers and harvesters; motor hoes, shredders, in particular, impact shredders, roller shredders; domestic water works for households, namely, high-pressure washers; electric hedge cutters, electric border shears, planing machines; power-operated woodworking apparatus, namely, circular saws; wood splitters, sweepers, namely, electric road sweepers, electric sweepers; leaf vacuums and power-operated leaf blowers; mowers, in particular, ride-on mowers, sickle bar mowers, automatic mowers, lawnmowers, robot mowers, rotary mowers, cylinder mowers; mixers, in particular, concrete mixers; motorized scythes, power-operated lawn trimmers; power-operated saws, in particular, firewood saws, chop saws and mitre saws, chain saws; snow clearing equipment, in particular, snow blowers and snow plow blades, rope winches, scarifiers; power-operated rollers for forestry, agricultural and horticultural use, in particular power-operated soil and garden rollers; motors for the aforesaid goods; and parts for the aforesaid goods
To the extent that both of the parties provide parts for machinery, the goods are closely related if not identical.
In this case, the earlier filed application uses broad wording to describe goods such as a variety of agricultural and off-highway machinery and “parts for the aforesaid goods”, which presumably encompasses all goods of the type described, including applicant’s more narrow agricultural and off-highway machinery parts. 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 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 are related.
http://www.fluid-power-solutions.com/hydraulic-services-agriculture/
Hydraulics are found everywhere in small and large-scale agricultural applications…
http://www.finotek.com/hydraulic-cartridge-valve-application/
Hydraulic cartridge valve has a series of advantages due its characteristics, which have been widely used in agricultural machinery…
http://www.agrisupply.com/hydraulic-cylinders-parts/c/2500000/
Find the hydraulic hose parts you need for your hydraulic hose assemblies at Agri Supply to maintain the hydraulics on all your agricultural and industrial equipment. …We stock 2-stage hydraulic cylinders and are an exclusive dealer of the Grizzly ® brand family of hydraulic cylinders for your log splitter, tractor, or other hydraulic equipment. We’ll locate the hydraulic parts to work with your machinery, because customer satisfaction is our highest priority.
http://www.agrisupply.com/searchcenter.aspx?keyword=manifold&prv=&adv=&hawkb=
manifolds
http://www.agrisupply.com/searchcenter.aspx?keyword=seal&prv=&adv=&hawkb=
seals
http://www.steinertractor.com/IHS3473Hydraulic-Cylinder-Seal-Kit?&TF=F2D544DECBF4
Hydraulic Cylinder Seal Kit for various machinery including agricultural and off-highway machinery.
Thus, parties’ 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).
Lastly, excerpts from applicant’s own website http://www.hydraforce.com/Acc-hous/Acc_html/8-650-1_Seal_Kits/8-650-1_Seal_Kits.htm previously attached confirms that these goods are closely related because applicant offers the same goods identified by the cited application: parts for various types of machinery. See also http://www.hydraforce.com/Applications/applications.html: “Every cartridge valve, manifold and electrohydraulic control goes through rigorous testing and inspection to perform beyond industry standards” highlighting use in tractors, excavators, wheel loaders, harvesters, material handling, and trailed ag systems. Thus, the evidence of record confirms that the parties’ goods are closely related/identical.
Applicant’s Arguments are Unpersuasive and Unsupported
Applicant’s arguments have been considered and found unpersuasive for the reasons set forth below.
Applicant argues that the cited mark was approved because many other marks with the term SOLO in them showed that SOLO was very commonly used. Applicant merely refers to and attaches the cited applicant’s argument but does not attach actual copies of third-party registrations for marks containing the wording SOLO 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. Furthermore, the registrations appear to be for a wide variety of goods in Classes 3, 4, 7, 8, 12, and 25. There is no indication that any of those registrations are for agricultural and off-highway machinery parts such as those identified by the parties herein.
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 only a small number of third-party registrations for similar marks with similar goods, 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 few similar third-party registrations submitted by applicant are insufficient to establish that the wording SOLO is weak or diluted for agricultural and off-highway machinery parts.
Further, 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 SOLO is weak or diluted for agricultural and off-highway machinery parts.
To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03. Accordingly, these registrations will not be considered.
The fact that some unrelated producers have registered identical marks does not prove that the goods are unrelated or that the marks can coexist in the marketplace. The examining attorney has not delved into the circumstances or analyses underlying the issuance of those registrations, nor do the registrations indicate the actual, current marketplace conditions. Third-party registrations are entitled to little weight on the issue of confusing similarity because the registrations are “not evidence that the registered marks are actually in use or that the public is familiar with them.” In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1167 n.5 (TTAB 2013) (citing In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)); see TMEP §1207.01(d)(iii). Moreover, the existence on the register of other seemingly similar marks does not provide a basis for registrability for the applied-for mark. AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1477 (TTAB 1999).
Applicant’s argument regarding the goods reflects a misunderstanding of the du Pont factor analysis. The question is whether the goods are sufficiently related such that, if identical in part marks are used thereon, consumers will believe that the products emanate from a single source. Thus, the argument that its goods are unrelated is insufficient to traverse a finding that the goods are related when the evidence of record confirms such and the broad wording “parts for the aforesaid goods” (referring to the preceding agricultural and off-highway machinery) encompasses and thus is legally identical to applicant’s agricultural and off-highway machinery parts.
Applicant argues that the parties’ consumers are sophisticated but does not provide any evidence to support this contention. In any event, 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).
Summary of Analysis
A consumer encountering the mark SOLOSEAL in connection with applicant’s agricultural and off-highway machinery valves, manifolds, and seals will incorrectly believe that the goods originate from the same source as registrant’s SOLO agricultural and off-highway machinery parts. As a result, because of the confusingly similar marks and closely related and potentially identical goods, registration is refused under Trademark Act Section 2(d).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
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.
How to respond. Click to file a response to this nonfinal Office action.
/Ms. Tasneem Hussain/
Trademark Examining Attorney
Law Office 130
tasneem.hussain@uspto.gov (preferred)
571.272.8273
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