To: | The Indium Corporation of America (jmuldoon@harrisbeach.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88429449 - SOLDER REDEFINED - 289688.1 |
Sent: | 6/26/2019 5:39:21 PM |
Sent As: | ECOM123@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88429449
MARK: SOLDER REDEFINED
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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: The Indium Corporation of America
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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: 6/26/2019
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.
SUMMARY OF ISSUES:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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.
Applicant has applied to register the mark SOLDER REDEFINED in standard characters for use in connection with “Technical consulting services related to manufacture, selection and use of nano-materials, specialty alloys, solder paste, solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, solder foil, solder fluxes, electrically conductive adhesives, electrically conductive underfills, electrically conductive polymers, indium containing fabrications and pure indium” in Class 40.
Registrants’ marks are as follows:
1. 5600043 – RE-DEFINED in standard characters for use in connection with “precious metals and alloys thereof” in Class 14, “precious metal refining and recycling services” in Class 40, and “assay services for precious metals and alloys” in Class 42.
2. 5760589 – RE-DEFINED in stylized characters for use in connection with “precious metals and alloys thereof” in Class 14, “precious metal refining and recycling services” in Class 40, and “assay services for precious metals and alloys” in Class 42.
COMPARISON 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).
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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34). Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, applicant’s mark, SOLDER REDEFINED, is similar to registrant’s marks, RE-DEFINED and RE-DEFINED, because the marks are similar in appearance, meaning, and commercial impression. The marks are similar because the common dominant wording in all of the marks is REDEFINED or RE-DEFINED. The only differences are (1) the fact that applicant’s mark has additional wording “SOLDER”, (2) the fact that registrant’s marks have a dash within the wording “RE-DEFINED”, and (3) the fact that registrant’s second mark is stylized while the applicant’s mark is in standard character.
Furthermore, the wording “SOLDER” is descriptive in the case of the applicant’s services, which are “Technical consulting services related to manufacture, selection and use of nano-materials, specialty alloys, solder paste, solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, solder foil, solder fluxes, electrically conductive adhesives, electrically conductive underfills, electrically conductive polymers, indium containing fabrications and pure indium”. The attached evidence from http://www.merriam-webster.com/dictionary/solder shows the wording “SOLDER” means “a metal or metallic alloy used when melted to join metallic surfaces”, and thus “SOLDER” is descriptive because the applicant provides technical consulting related to types of solder. Because “SOLDER” is descriptive here, the wording REDEFINED in applicant’s mark is the only dominant feature when determining whether the marks are confusingly similar, and the fact that the applicant provides the additional wording “SOLDER” will not obviate similarity.
The word portions of the marks are nearly identical in appearance, connotation, and commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii). Thus, the fact that registrant’s second mark is stylized will not obviate a similarity between the marks in this case.
Therefore, the marks are similar and the above differences do not change the commercial impression of the marks.
COMPARISON OF THE GOODS AND SERVICES
With regard to registrant’s marks 1 and 2, the applicant’s services are “Technical consulting services related to manufacture, selection and use of nano-materials, specialty alloys, solder paste, solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, solder foil, solder fluxes, electrically conductive adhesives, electrically conductive underfills, electrically conductive polymers, indium containing fabrications and pure indium”. Registrant’s goods are “precious metals and alloys thereof” in Class 14, “precious metal refining and recycling services” in Class 40, and “assay services for precious metals and alloys” in Class 42.
Thus, applicant’s services, “Technical consulting services related to manufacture, selection and use of . . . specialty alloys”, are related to registrant’s goods, namely, “precious metals and alloys”, because both are likely to involve the same channels of trade and the same classes of consumers. The attached evidence from http://www.asi-alloys.com/index.php, http://www.imacroinc.com/Company-refractories-refractory.html, http://www.sharrettsplating.com/free-quote, http://www.sharrettsplating.com/additional-services/consulting, http://www.neymetals.com/about-us/, and http://www.aimalloys.com/ shows that it is common for both applicant’s and registrant’s goods and services to be sold and performed by a single source. Specifically, the attached websites show companies that manufacture metals and alloys and provide consulting related to the use or manufacture of metals and alloys.
Therefore applicant’s services are related to registrant’s goods.
CONCLUSION
In conclusion, the parties utilize highly similar marks that have the same dominant feature conveying a highly similar overall impression in connection with closely related goods and services that appear to be marketed to the same consumers through similar channels of trade. Therefore, registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 5600043 and 5760589.
IDENTIFICATION AND CLASSIFICATION OF SERVICES
Applicant has applied for the following identification of services:
Class 40: Technical consulting services related to manufacture, selection and use of nano-materials, specialty alloys, solder paste, solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, solder foil, solder fluxes, electrically conductive adhesives, electrically conductive underfills, electrically conductive polymers, indium containing fabrications and pure indium
Applicant must clarify the wording “Technical consulting services related to manufacture, selection and use of nano-materials, specialty alloys, solder paste, solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, solder foil, solder fluxes, electrically conductive adhesives, electrically conductive underfills, electrically conductive polymers, indium containing fabrications and pure indium” in the identification of services in International Class 40 because it is indefinite and includes services outside of Class 40. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because “Technical consulting services related to manufacture, selection and use” does not clearly indicate the nature of the services. Further, this wording could identify services in more than one international class. For example, “Technical consulting services related to manufacture” is in Class 40, and “Technical consulting services related to selection” is in Class 35. Therefore applicant must amend the application in order to clarify the services.
Applicant may substitute the following wording, if accurate:
Class 35: Technical consulting services related to selection of nano-materials, specialty alloys, solder paste, solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, solder foil, solder fluxes, electrically conductive adhesives, electrically conductive underfills, electrically conductive polymers, indium containing fabrications and pure indium
Class 40: Technical consulting services related to manufacture of nano-materials, specialty alloys, solder paste, solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, solder foil, solder fluxes, electrically conductive adhesives, electrically conductive underfills, electrically conductive polymers, indium containing fabrications and pure indium
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.
The application references goods and/or services based on use in commerce in more than one international class; therefore, applicant must satisfy all the requirements below for each international class:
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). Specifically, the application identifies services based on use in commerce that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for classes 35 and 40. See more information about specimens.
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 15 U.S.C. §§1051(a), 1112; 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(1), 2.86(a); TMEP §§904, 1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
DISCLAIMER REQUIRED
Applicant must provide a disclaimer of the unregistrable part 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 “SOLDER” because it is not inherently distinctive. This unregistrable term at best is merely descriptive of a feature or use of applicant’s 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).
The attached evidence from http://www.merriam-webster.com/dictionary/solder shows the wording “SOLDER” means “a metal or metallic alloy used when melted to join metallic surfaces”. Thus, the wording merely describes a feature applicant’s services because the applicant is providing “Technical consulting services related to manufacture, selection and use of nano-materials, specialty alloys, solder paste, solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, solder foil, solder fluxes, electrically conductive adhesives, electrically conductive underfills, electrically conductive polymers, indium containing fabrications and pure indium”.
Furthermore, the applicant’s identification shows that its technical consulting services relate to the manufacture and use of “solder paste, solder preforms, solder spheres, solder wire, solder tubing, solder ribbon, solder foil, solder fluxes”. Use of a term in the identification is a clear indication of the descriptive nature of the term in connection with the services. Accordingly, since the term SOLDER describes a feature or use of the applicant’s services, the term is descriptive and must be disclaimed.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “SOLDER” 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.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
Solite, Joshua
/Joshua A. Solite/
Law Clerk
Law Office 123
U.S. Patent & Trademark Office
(571) 272-3199
joshua.solite@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.