To: | Akzo Nobel Coatings International B.V. (ipani.trademark@akzonobel.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88418931 - NAVIGATOR - 25124-US-1 |
Sent: | 6/7/2019 11:57:28 AM |
Sent As: | ECOM120@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88418931
Mark: NAVIGATOR
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Correspondence Address: |
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Applicant: Akzo Nobel Coatings International B.V.
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Reference/Docket No. 25124-US-1
Correspondence Email Address: |
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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: 6/7/2019
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 – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3118394. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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 [or services] and differences in the marks.”); TMEP §1207.01.
Similarity of the Marks
In the present case, applicant’s mark is NAVIGATOR and registrant’s mark is NAVIGATOR. 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.
Therefore, the marks are confusingly similar.
Similarity or Relatedness of the Goods
Applicant’s goods are “Paints, coatings, enamels, varnishes; coloring matters, distempers, lacquers; paint and varnish drying preparations and substances; wood preservatives, wood stains; anti-corrosives; anti-fouling compositions, anti-fouling paints; thinners for the aforesaid goods; primers, all for use in the marine industry.” Registrant’s goods are “Cleaners and polishes for floors.” These goods are related.
Conclusion
Given that the applied-for mark is confusingly similar to the registrant’s mark in sound and appearance and that applicant’s goods are related to registrant’s goods, applicant is rightly refused registration under Section 2(d) for a likelihood of confusion.
It is important to note that any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. 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). This is because the overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant 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).
Applicant should note the following additional ground for refusal.
CLARIFICATION OF IDENTIFICATION OF GOODS
The wording “coloring matters” in the identification of goods is indefinite and must be clarified to indicate specific coloring matters. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. The wording “paint and varnish drying preparations and substances” is indefinite and must be clarified to indicate specific goods. The wording “anti-fouling compositions, anti-fouling paints” is indefinite and must be clarified to indicate specific goods.
If applicant adds an international class to the application, applicant must comply with the multiple-class application requirements in thig Office action.
Applicant may adopt the following identification of goods, if accurate:
Class 2: “Paints, coatings in the nature of { specify, e.g., floor coatings, optical coatings}, enamels in the nature of { specify, e.g., enamels for painting, enamels for use as varnishes}, varnishes; coloring matters in the nature of {specify, e.g., paints, food coloring}, distempers, lacquers; paint and varnish drying preparations and substances, namely, drying agents for paints and varnishes; wood preservatives, wood stains; anti-corrosives, namely, {specify, e.g., anti-corrosive oils, anti-corrosive papers, anti-corrosive coatings, anti-corrosive paints}; anti-fouling compositions, namely, anti-fouling paints; thinners for the aforesaid goods; primers, all for use in the marine industry.”
Class 3: “Nail enamels.”
Class 17: “Coatings, namely, insulating coatings; anti-corrosives, namely, anti-corrosive tape.”
Class 19: “Coatings, namely, asphalts roof coatings.”
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 and/or services 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 a fee sufficient for only one class. 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.
RESPONSE GUIDELINES
ASSISTANCE
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
/Clare Cahill/
Examining Attorney
Law Office 120
(571) 272-5218
clare.cahill@uspto.gov
RESPONSE GUIDANCE