To: | Zep IP Holding LLC (uspt@polsinelli.com) |
Subject: | U.S. Trademark Application Serial No. 88595891 - HYDRAGENIX - 103559632172 |
Sent: | March 20, 2020 02:42:05 PM |
Sent As: | ecom130@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88595891
Mark: HYDRAGENIX
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Correspondence Address: |
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Applicant: Zep IP Holding LLC
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Reference/Docket No. 103559632172
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
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: March 20, 2020
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 that Applicant Must Address
Refusal under Section 2(d) – 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. 5709915. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Applicant seeks to register the proposed mark HYDRAGENIX. The cited registration is for the mark HYDRAGANICS. These marks are quite similar in appearance and sound, and they create confusingly similar commercial impressions.
Applicant seeks to register its mark for “Cleaning preparations; chemical preparations for cleaning purposes in the food and beverage, pharmaceutical, ethanol production and cannabis oil production industries; hand cleaning preparations,” and “Sanitizing preparations for sanitizing purposes in the food and beverage, pharmaceutical, ethanol production and cannabis oil production industries; hand cleaning and sanitizing preparations; disposable sanitizing wipes.” Registrant’s goods are “Non-medicated skin care preparations, namely, creams, lotions, gels, oils, serums, toners, cleansers, non-medicated facial and body topical lotions, creams, serums, gels and oils for cosmetic purposes; non-medicated facial and body skin care and cleansing preparations for use by infants, children and adults; non-medicated lip balm; disposable wipes impregnated with non-medicated skin cleansers; disposable wipes impregnated with non-medicated skin moisturizers and anti-aging compounds; lip balm; make-up; cosmetic preparations for skin.” These goods are closely related because they include cleansers skin.
In this case, the registration uses broad wording to describe cleansers, which presumably encompasses all goods and/or services of the type described, including applicant’s more narrow hand cleaners. 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 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 goods and/or services 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 goods and/or services are related.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Identifications of Goods
The identifications of goods are indefinite and must be clarified because the chemical preparations listed in CLASS 3 are properly classified in CLASS 1 and the hand cleaners in CLASS 5 are classified in CLASS 3. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend the identification to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.
The following substitute wording is suggested, if appropriate: (Note that proposed changes have been placed in bold type. Some items require applicant to include more complete information. These have been designated with braces{ } and/or bold type. The information in the braces is suggested as an example for applicant to follow and should not be merely “cut and pasted.”):
· Chemical preparations for cleaning purposes in the food and beverage, pharmaceutical, ethanol production and cannabis oil production industries, in INT. CLASS 1;
· Cleaning preparations; hand cleaning preparations, in INT. CLASS 3;
· Sanitizing preparations for sanitizing purposes in the food and beverage, pharmaceutical, ethanol production and cannabis oil production industries; hand sanitizing preparations; disposable sanitizing wipes, in INT. CLASS 5.
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e).
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.
Requirements for a Combined Application
(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 and/or services that are classified in at least 3 classes; however, applicant submitted a fee sufficient for only 2 classes. 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 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For 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, see the Multiple-class Application webpage.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Curtis W. French/
Curtis W. French
Trademark Examining Attorney
Law Office 130
571-272-9472
curtis.french@uspto.gov
RESPONSE GUIDANCE