To: | Seymour Midwest LLC (gp@barrettlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88600847 - SPEED SQUEEGEE - 51464.16 |
Sent: | December 05, 2019 07:29:12 AM |
Sent As: | ecom106@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88600847
Mark: SPEED SQUEEGEE
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Correspondence Address:
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Applicant: Seymour Midwest LLC
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Reference/Docket No. 51464.16
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: December 05, 2019
Introduction:
Likelihood of Confusion:
The applicant applied to register the mark: SPEED SQUEEGEE for hand tools in the nature of squeegees for use manually with a handle in Int. Class 8.
Similarities in Appearance, Sound, Connotation and Commercial Impression:
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.
SPEED SQUEEGEE vs. SPEED SQUEEGY
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the 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.
The applicant features the mark “SPEED SQUEEGEE” and the registrant features the mark “SPEED SQUEEGY”.
The marks in questions both feature the identical word SPEED. The marks in question also both feature the same word SQUEEGEE but in different phonetic forms. This difference is inconsequential as both words refer to the same product, namely, a cleaning wiper, therefore, these marks are indistinguishable.
Goods:
The applicant features hand tools in the nature of squeegees for use manually with a handle in Int. Class 8. The registrant features squeegee blades specially adapted for use with floor cleaning machines in Int. class 7. The goods are the same.
Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
Where the goods of an applicant and registrant are identical or virtually identical, as is the case here, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Other Informalities:
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following informalities.
Disclaimer:
Applicant must disclaim the descriptive wording “SQUEEGEE” apart from the mark as shown because the wording merely describes a scraping implement with a rubber-edged blade set on a handle, typically used for cleaning windows and the applicant features these goods. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).
The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer. TMEP §1213.08(a)(i). The following is the standard format used by the Office:
No claim is made to the exclusive right to use “SQUEEGEE” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
Failure to comply with a requirement to disclaim has been held to be a basis for refusal to register before the Act of 1946. See In re American Cyanamid & Chemical Corp., 99 F.2d 964, 39 USPQ 445 (C.C.P.A. 1938). Failure to comply with a requirement to disclaim also was held to justify a refusal after the 1946 Act. See In re Hercules Fasteners, Inc., 203 F.2d 753, 97 USPQ 355 (C.C.P.A. 1953); Ex parte Knomark Mfg. Co., Inc., 118 USPQ 182 (PO Ex. Ch. 1958). Even after amendment of the pertinent language of §6 of the 1946 Act to the discretionary wording "may require the applicant to disclaim," registration may be refused if an applicant does not comply with a requirement for disclaimer made by the examining attorney. See In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (C.C.P.A. 1975); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968).
Identification of Goods:
Applicant may adopt the following identification, if accurate:
International Class 21:
Window cleaners in the nature of a combination squeegee and handle; Squeegees being cleaning instruments with a handle.
For assistance regarding an acceptable listing of goods and/or services, please see the on-line searchable Manual of Acceptable Identifications of Goods and Services, at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/.
Recitation and Identification Amendment Advisory:
Please note that, while the identification of goods/services may be amended to clarify or limit the goods/services, adding to the goods/services or broadening the scope of the goods/services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods/services that are not within the scope of the goods/services set forth in the present identification/recitation.
Questions:
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.
/ LDA/
Lourdes Ayala,
Attorney at Law
Law Office 106
Telephone Number 571-272-9316
Lourdes.Ayala@uspto.gov
RESPONSE GUIDANCE