To: | Hawkeye Steel Products, Inc. (uspto@shuttleworthlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88478561 - SPAN-TECH - 21536-1-3 |
Sent: | September 17, 2019 11:35:09 AM |
Sent As: | ecom113@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88478561
Mark: SPAN-TECH
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Correspondence Address: |
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Applicant: Hawkeye Steel Products, Inc.
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Reference/Docket No. 21536-1-3
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 17, 2019
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 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 RF applicants who do not meet these requirements must submit an additional processing fee of $125. 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 RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
INTRODUCTION
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.
The applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Here, the applicant’s mark is SPAN-TECH for fabric covered buildings made substantially of metal, and the registrant’s mark is SPANTECH for, among other things, tents.
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.
In this case, the following factors are the most relevant: similarity of the marks and similarity of the producer and trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
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).
Here, the applicant's standard character mark SPAN-TECH is confusingly similar to the registrant's stylized mark SPANTECH.
Specifically, the compared marks are identical except for a slight difference in appearance between registrant’s mark, which appears as a compound word with no space separating the words, that is, SPANTECH; and applicant’s mark, which appears as multiple words with space separating the words, that is, SPAN-TECH. As such, the marks are identical in sound and virtually identical in appearance, and are thus confusingly similar for the purposes of determining likelihood of confusion. See, e.g., Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks ‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical [internal citation omitted].”); In re Best W. Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically identical”); Stock Pot, Inc., v. Stockpot Rest., Inc., 220 USPQ 52, 52 (TTAB 1983), aff’d 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar. The word marks are phonetically identical and visually almost identical.”). Additionally, the preceding wording is identical in commercial impression and meaning, namely, evoking “breadth” and “[t]he application of science, especially to industrial or commercial objectives.” http://www.ahdictionary.com/word/search.html?q=span; http://www.ahdictionary.com/word/search.html?q=tech; http://www.ahdictionary.com/word/search.html?q=technology.
Accordingly, the marks are confusingly similar.
Relatedness of the Goods
Here, the applicant's fabric covered buildings made substantially of metal are closely related to the registrant's tents.
Specifically, the attached evidence establishes that third parties routinely offer the identified goods under the same mark and in the same trade channels. See, e.g., http://www.clearspan.com/gallery/clearspan-tent-sale/ and http://www.clearspan.com/products/hd-container-buildings/ (offering tents and fabric covered buildings made substantially of metal under ClearSpan mark); http://weatherport.com/products/cabins-yurts/hunting-blinds/ and http://weatherport.com/products/building-models/gable-building/ (same under WeatherPort mark); http://www.shelterlogic.com/shop/manufacturer/shelterlogic/outdoor-shades/party-tent-series and http://www.shelterlogic.com/shop/sheltercoat-custom-shelters?configurable_Style=248 (same under ShelterLogic mark); http://www.rhinoshelters.com/portable-buildings/20-rv-boat-house.html and http://www.rhinoshelters.com/9-party-tents (same under Rhino Shelter mark).
Accordingly, the goods are closely related.
Because the marks are confusingly similar and the goods are closely related, consumers are likely to be confused as to the source of the goods. Thus, registration is refused pursuant to Trademark Act Section 2(d).
Response to Refusal
Although the applicant's mark has been refused registration, the applicant may respond to the refusal by submitting evidence and offering argument against the refusal and in support of registration.
REQUIREMENT
If the applicant responds to the refusal, then the applicant also must respond to the below requirement.
IDENTIFICATION OF GOODS AMENDMENT REQUIRED
Therefore, the applicant may adopt the following identification of goods, if accurate:
Class 6: {indicate whether goods are transportable, portable, prefabricated, or modular, e.g., Prefabricated} fabric covered buildings made substantially of metal
Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods or add goods not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods will further limit scope, and once goods are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
RESPONSE GUIDELINES
How to respond. Click to file a response to this nonfinal Office action
/Kevin G. Crennan/
Trademark Examining Attorney
Law Office 113
(571) 272-7949
kevin.crennan@uspto.gov
RESPONSE GUIDANCE