United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88469547
Mark: INTEGRA
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Correspondence Address: |
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Applicant: Tucker GmbH
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Reference/Docket No. MPL/SEF/Inte
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: September 16, 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.
REFUSAL – SECTION 2(d) – LIKELIHOOD OF CONFUSION
The applied-for mark is INTEGRA (in standard character form) for “Fasteners of plastic, other than for use in building materials; plastic clips, other than for use in building materials; retainers, other than for use in building materials; carpet retainers, door trim fasteners, trim component fasteners, inner fender fasteners, door trim pad fasteners, door trim panel fasteners, interior trim panel fasteners, exterior trim molding fasteners, all the aforesaid goods made of plastics or partially of plastics, none of the aforesaid goods for use in building materials; electrical connector plastic fasteners, other than for use in building materials; bus bars made partially of plastics, other than for use in building materials; push buttons made of plastic, other than for use in building materials; straps, tie straps, straps for attaching to a hole, straps for attaching to a stud, straps to secure a wire bundle, wire bundle clips, wire routing clips, tube routing clips, hose routing clips, routing clips, vibration damping routing clips, all the aforesaid goods made of plastics or partially of plastics, none of the aforesaid goods for use in building materials; bumper spacers made of plastics or partially of plastics, other than for use in building materials; collars of plastic for fastening pipes, other than for use in building materials; pins of plastic, other than for use in building materials; grommets, grommet fasteners, all the aforesaid goods made of plastics or partially of plastics, none of the aforesaid goods for use in building materials; fasteners of plastic for automotive assembly; plastic clips for automotive assembly; retainers made of plastics or partially of plastics for automotive parts; glove box door fasteners; electrical connector plastic fasteners for automotive assembly; bus bars made partially of plastics for automotive assembly; push buttons made of plastic for automotive assembly; straps for automotive assembly; collars of plastic for fastening pipes for automotive assembly; pins of plastic for automotive assembly; grommet fasteners for automotive assembly made of plastics or partially of plastics; fitting parts made of plastics or partially of plastics for automotive assembly; sealing plugs for automotive assembly; all the aforesaid goods excluding hanging supports for domestic curtains, especially curtain rods, curtain rails, curtain holders, holders for curtain rods, curtain ring, cable tension regulators for curtains; None of the aforesaid for use in relation to, or including, domestic window covers, domestic window covering products, domestic curtain rails, domestic curtain runners or domestic curtain fittings” in International Class 20. The goods are indefinite and misclassified – see requirement below.
The mark in Registration No. 30622991 is INTEGRA (in standard character form) for “Cordage, namely, nylon tie-down straps for use in securing cargo” in International Class 22.
The mark in Registration No. 4870767 is INTEGRA SSA (in standard character form) for “Pipe gaskets” in International Class 17
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.
Comparison of the Marks
In the present case, applicant’s mark is INTEGRA and registrant’s mark in Registration No. 3062991 is INTEGRA. 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.
With respect to Registration No. 4870767, the applied-for and registered marks share the identical wording INTEGRA. Applicant has merely removed the letters SSA from the registered mark. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Based on the foregoing, the applicant’s applied-for and registrants’ marks are sufficiently similar to find a likelihood of confusion.
Comparison of the Goods
Based on the analysis above, applicant’s and registrant’s goods are related.
Because applicant’s and registrant’s marks are similar and the goods are related, there is a likelihood of confusion and applicant’s applied-for mark must be refused under Section 2(d) of the Lanham Act.
REQUIREMENT – CLARIFY ENTITY TYPE
Alternatively, if applicant maintains that the legal entity in the application properly identifies applicant’s entity type, applicant must provide an explanation as to why the identified entity type is more similar to a “corporation” in this instance than to the legal entities listed in TMEP Appendix D. See id.
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
REQUIREMENT – AMEND IDENTIFICATION OF GOODS
Applicant may substitute the following wording, if accurate: “Non-metal fasteners, namely, retainers, other than for use in building materials.”
Applicant may substitute the following wording, if accurate: “straps for {indicate purpose, securing bundles, etc.}, tie straps for {indicate purpose, securing bundles, etc.}, straps for attaching to a hole, straps for attaching to a stud, straps to secure a wire bundle all the aforesaid goods made of plastics and partially of plastics, none of the aforesaid goods for use in building materials” in International Class 22 and “wire bundle clips, wire routing clips, tube routing clips, hose routing clips, routing clips, vibration damping routing clips, all the aforesaid goods made of plastics and partially of plastics, none of the aforesaid goods for use in building materials” in International Class 20.
An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language.
Applicant may substitute the following wording, if accurate:
Class 9: Electric conductors, namely, bus bars made partially of plastics, other than for use in building materials; Electric conductors, namely, bus bars made partially of plastics for automotive assembly
Class 20: Fasteners of plastic, other than for use in building materials, namely, {indicate purpose, e.g., for holding bed sheets and linens in places, etc.}; plastic clips, other than for use in building materials, namely, {indicate purpose, e.g., for sealing bags, etc.}; Non-metal fasteners, namely, retainers, other than for use in building materials; carpet retainers in the nature of non-metal fasteners, non-metal door trim fasteners, {type of trims, e.g., drawer, door, window} trim component fasteners, inner fire fender fasteners, non-metal door trim pad fasteners, non-metal door trim panel fasteners, interior {type of trims, e.g., drawer, door, window} trim panel fasteners, exterior {type of trims, e.g., drawer, door, window} trim molding fasteners, all the aforesaid goods made of plastics and partially of plastics, none of the aforesaid goods; electrical connector plastic fasteners, other than for use in building materials, namely, {indicate specific items, e.g., bolts, nails, rivets, screws}; push buttons made of plastic, other than for use in building materials; wire bundle clips, wire routing clips, tube routing clips, hose routing clips, routing clips, vibration damping routing clips, all the aforesaid goods made of plastics and partially of plastics, none of the aforesaid goods for use in building materials; bumper spacers made of plastics or partially of plastics, other than for use in building materials, namely, {indicate purpose, e.g., spacers used in the installation of flooring, tile spacers, etc.}; collars of plastic for fastening pipes, other than for use in building materials; Non-metal fasteners, namely, pins of plastic, other than for use in building materials, namely, {indicate purpose of pins, e.g., cotter pins, etc.}; grommets, grommet fasteners, all the aforesaid goods made of plastics and partially of plastics, none of the aforesaid goods for use in building materials; fasteners of plastic for automotive assembly; plastic clips for automotive assembly; Non-metal fasteners, namely, retainers made of plastics and partially of plastics for automotive parts; glove box door fasteners, namely, {indicate specific items, e.g., bolts, nails, rivets, screws}; electrical connector plastic fasteners for automotive assembly, namely, {indicate specific items, e.g., bolts, nails, rivets, screws}; push buttons made of plastic for automotive assembly; collars of plastic for fastening pipes for automotive assembly; Non-metal fasteners, namely, pins of plastic for automotive assembly, namely, {indicate purpose of pins, e.g., cotter pins, etc.}; grommet fasteners for automotive assembly made of plastics and partially of plastics; “{indicate type, e.g., furniture, window, bed, door, etc.} fitting parts made of plastics and partially of plastics for automotive assembly; all the aforesaid goods excluding hanging supports for domestic curtains, especially curtain rods, curtain rails, curtain holders, holders for curtain rods, curtain ring, cable tension regulators for curtains; None of the aforesaid for use in relation to, or including, domestic window covers, domestic window covering products, domestic curtain rails, domestic curtain runners or domestic curtain fittings
Class 17: Sealing plugs made primarily from rubber for automotive assembly
Class 22: straps for {indicate purpose, securing bundles, etc.}, tie straps for {indicate purpose, securing bundles, etc.}, straps for attaching to a hole, straps for attaching to a stud, straps to secure a wire bundle all the aforesaid goods made of plastics and partially of plastics, none of the aforesaid goods for use in building materials; straps for automotive assembly, namely, {indicate material composition of goods, e.g., All-purpose nylon straps, All-purpose straps comprised of synthetic textile materials, etc.}
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 REQUIREMENT
(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 fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least three (3) classes; however, applicant submitted a fee(s) sufficient for only one (1) 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.
ASSISTANCE
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.
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
Calloway, Christina
/Christina Calloway/
Examining Attorney
Law Office 122
571-272-7342
christina.calloway@uspto.gov
RESPONSE GUIDANCE