To: | Thetford Corporation (stolson@hdp.com) |
Subject: | U.S. Trademark Application Serial No. 88576274 - INDUS - 4623BV200226 |
Sent: | September 19, 2019 03:25:47 PM |
Sent As: | ecom126@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88576274
Mark: INDUS
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Correspondence Address: |
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Applicant: Thetford Corporation
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Reference/Docket No. 4623BV200226
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 19, 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.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is “INDUS” presented in standard character form, for use in connection with the following goods, in pertinent part:
International Class 11: Toilets, portable toilets; toilets for recreational vehicles, caravans and boats; filters, discharge devices, discharge modules, discharge storage bins, extension hoses, flush water holding tanks, grey water holding tanks, black water holding tanks, waste macerators, pumps, valves and ventilators for toilets, portable toilets and chemical toilets for recreational vehicles, caravans and boats
Registrant’s mark is “INDUS”, presented in standard character form, for use in connection with the following goods, in pertinent part:
International Class 11: Heat Exchangers, other than parts of machines; Coils as parts of distilling, heating or cooling installations;, Central heating radiators; Cooling evaporators; Heat Exchange Units not being parts of machines, Refrigeration condensers; electric coolers; Evaporative air coolers; Air-conditioning installations; Air- conditioning apparatus; electric and gas refrigerators for industrial use; Plumbing fittings, namely, valves; Valves for air conditioners; Dehumidifiers; Industrial dehumidifiers; Filters for air conditioning; Vehicle climate-control system for heating, ventilation and air-conditioning; Heating apparatus for vehicles
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 [or services] and differences in the marks.”); TMEP §1207.01.
Similarity of the Marks
In the present case, applicant’s mark is “INDUS” and registrant’s mark is “INDUS”. 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 and/or services. Id.
As such, the marks are confusingly similar pursuant to Section 2(d) of the Trademark Act.
Similarity of the Goods
In this case, the registration uses broad wording to describe “Plumbing fittings, namely, valves” which presumably encompasses all goods of the type described, including applicant’s more narrow “valves . . . for toilets”. 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 valves 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 valves 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 valves goods services are related.
Accordingly, as currently identified, the parties’ goods are either identical, overlapping or highly related, and therefore considered related for purposes of likelihood of confusion analysis. In view of the foregoing, the application must be refused registration pursuant to Section 2(d) of the Trademark Act.
The wording “Chemical and biological preparations for hygienic purposes” identification of goods in International Class 5 is indefinite and must be clarified to specify the specific chemical and biological preparations. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
The wording computer or mobile phone based applications, namely, applications for monitoring, operating, regulating, routing and instructing an on-board wastewater management system for recreational vehicles, caravans and boats” in the identification of goods in International Class 9 is indefinite and must be clarified to specify that the applications are downloadable.
The wording “filters, discharge devices, discharge modules, discharge storage bins, extension hoses, flush water holding tanks, grey water holding tanks, black water holding tanks, waste macerators, pumps, valves and ventilators for toilets, portable toilets and chemical toilets for recreational vehicles, caravans and boats” in International Class 11 is indefinite and overly broad and must be clarified to clarify that the goods are specially adapted for toilets in order to be classified in International Class 11.
Applicant may adopt the following identification, if accurate (additions are shown in bold, comments are in bold italics):
International Class 1: Chemical and biological additives, in particular flush water, grey water and black water additives; cartridges filled with chemical additives, in particular for flush water, grey water and black water additives
International Class 5: Chemical and biological preparations in the nature of disinfectants for hygienic purposes; disinfectants for toilets, in particular chemical odor control concentrate for the prevention of odors in toilets in recreational vehicles, caravans and boats
International Class 9: User interfaces, namely, electric toilet control panels for electrotechnical and electronic toilet devices; Downloadable computer or mobile phone based applications, namely, downloadable computer software and mobile applications for monitoring, operating, regulating, routing and instructing an on-board wastewater management system for recreational vehicles, caravans and boats
International Class 11: Toilets, portable toilets; toilets for recreational vehicles, caravans and boats; Toilet plumbing fixtures specially adapted for toilets, portable toilets and chemical toilets for recreational vehicles, caravans and boats in the nature of water filters, discharge devices, discharge modules, discharge storage bins, extension hoses, flush water holding tanks, grey water holding tanks, black water holding tanks, waste macerators, pumps, valves and ventilators
International Class 16: Toilet paper
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.
INTENT TO PERFECT 44(e)
The application specifies Trademark Act Section 44(d) as the sole filing basis and indicates that applicant intends to rely on Section 44(e) as a basis for registration; however no copy of a foreign registration was provided. See 15 U.S.C. §1126(d), (e).
An application with a Section 44(e) basis must include a true copy, photocopy, certification, or certified copy of a foreign registration from an applicant’s country of origin. 15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004, 1004.01, 1016. In addition, the applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law. 15 U.S.C. §1126(b); TMEP §§1002.01, 1004.
Therefore, applicant must provide a copy of the foreign registration from applicant’s country of origin when it becomes available. TMEP §1003.04(a). A copy of a foreign registration must consist of a document issued to an applicant by, or certified by, the intellectual property office in applicant’s country of origin. TMEP §1004.01. If applicant’s country of origin does not issue registrations or Madrid Protocol certificates of extension of protection, the applicant may submit a copy of the Madrid Protocol international registration that shows that protection of the international registration has been extended to applicant’s country of origin. TMEP §1016. In addition, applicant must also provide an English translation if the foreign registration is not written in English. 37 C.F.R. §2.34(a)(3)(ii); TMEP §1004.01(a)-(b). The translation should be signed by the translator. TMEP §1004.01(b).
If the foreign registration is not yet available, applicant should inform the trademark examining attorney that the foreign application is still pending and request that the U.S. application be suspended until a copy of the foreign registration is available. TMEP §§716.02(b), 1003.04(a).
If applicant cannot satisfy the requirements of the Section 44(e) basis, applicant may amend the basis to Section 1(a) or 1(b), if applicant can satisfy the requirements for the new basis. See 15 U.S.C. §§1051(a)-(b), 1126(e); TMEP §806.03. Please note that, if the U.S. application satisfied the requirements of Section 44(d) as of the U.S. application filing date, applicant may retain the priority filing date under Section 44(d) without perfecting the Section 44(e) basis, provided there is a continuing valid basis for registration. See 37 C.F.R. §2.35(b)(3)-(4); TMEP §§806.02(f), 806.03(h).
RESPONSE GUIDELINES
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.
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/Alexandra Portaro/
Alexandra Portaro
Law Office 126
(571) 270-3924
Alexandra.Portaro@uspto.gov
RESPONSE GUIDANCE