To: | Hellas Construction, Inc. (rdewanipdocket@jw.com) |
Subject: | U.S. Trademark Application Serial No. 88605359 - TP - 130358.00092 |
Sent: | December 08, 2019 07:12:43 PM |
Sent As: | ecom106@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88605359
Mark: TP
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Correspondence Address: 100 CONGRESS AVENUE, SUITE 1100
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Applicant: Hellas Construction, Inc.
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Reference/Docket No. 130358.00092
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 08, 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.
SUMMARY OF ISSUES:
SECTION 2(d) REFUSAL – 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. 4834523. 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 mark TP (in standard characters) for “Infill materials for use with synthetic turf” in International Class 19.
The registrant’s mark is TRIPLEPLAY TP TRIPLEPLAY (in design form) for “artificial turf” in International Class 27 and “design of athletic playing surfaces consisting primarily of artificial turf” in International Class 42.
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.
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, applicant’s mark, TP, is identical to the dominant portion of the registrant’s mark, also TP. Accordingly, the marks are similar in terms of sound, appearance, and overall commercial impression.
Although marks must be compared in their entireties and should not be dissected, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)).
In this case, the lettering “TP” in registrant’s mark appears in a much larger size than the other wording in the mark and is located directly in the center of the mark such that it dominates the overall visual appearance of the mark. Therefore, the dominant portion of the registered mark is TP, which is identical to the applied-for mark.
In essence, applicant’s mark merely deletes the additional wording “TRIPLEPLAY” from the registrant’s 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.
Thus, the marks at issue are confusingly similar.
Relatedness of the Goods
Here, applicant’s goods consist of infill materials for synthetic turf, while the registrant’s goods consist of artificial turf. The goods of the parties are clearly related in that applicant’s goods are especially for use in filling in the same types of goods provided by the registrant and the goods are therefore complementary in nature.
Summary
In sum, due to the similarity of the marks and the relatedness of the respective goods, it is likely consumers will mistakenly believe the goods emanate from the same source. The overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988). Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act.
Applicant should note the following additional ground for refusal.
SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
Applicant has applied to register the mark TP (in standard characters) for “Infill materials for use with synthetic turf” in International Class 19.
The attached evidence from http://www.acronymfinder.com/~/search/af.aspx?Acronym=TP&Category=SciMed&Page=0&string=&s=a shows that the initialism “TP” is commonly used to refer to “thermo-plastic.” As shown by the additional attached third party website evidence, it is common for infill for synthetic turf to be comprised of thermoplastics.
In the present case, applicant’s goods are identified without specificity as to their material composition. Thus, it can be presumed that the identified goods include infill materials comprised of thermoplastics. Accordingly, the lettering “TP” merely describes a feature of the goods, namely, that they are made of thermoplastic materials.
In sum, applicant’s mark is merely descriptive because consumers are likely to perceive the proposed mark as describing a feature of applicant’s goods rather than the source of the goods. Accordingly, registration is refused pursuant to Section 2(e)(1) of the Trademark Act.
IDENTIFICATION AND CLASSIFICATION OF GOODS
Applicant must clarify the the identification of goods because it is indefinite and too broad. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. This wording is indefinite because it fails to specify the composition of the infill materials. Because of this, the identification could identify goods in more than one international class. For example, infill materials for synthetic turf comprised of thermoplastic elastomer pellets, semi-processed cellulose acetate, or semi-worked rubber are in International Class 17 and infill materials for synthetic turf comprised of silica sand or ground cork are in International Class 19. Accordingly, applicant must clarify the material composition of the goods and classify the goods accordingly.
Please see the suggested amendments below. Applicant should note that any wording in bold, in italics, and/or in ALL CAPS below offers guidance or shows the changes being proposed for the identification of goods. If there is wording in the
applicant’s identification of goods which should be removed, it will be shown with a line through it such as this: strikethrough. When making amendments,
applicant should enter them in standard font, not in bold, in italics, and/or in ALL CAPS. If applicant adds one or more
international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
Applicant may adopt the following identification and classification of goods, if accurate:
International Class 17: Infill materials, NAMELY, ____________ {specify Class 17 materials, e.g., thermoplastic elastomer pellets, semi-processed cellulose acetate, semi-worked rubber} for use with synthetic turf
International Class 19: Infill materials, NAMELY, ____________ {specify Class 19 materials, e.g., silica sand, ground cork} for use with synthetic turf
See TMEP §1402.01.
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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(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 already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 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.
ADDITIONAL INFORMATION REQUIRED
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade.
In addition, applicant must respond to the following inquiries about the goods:
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods and services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
/J. Evan Mucha/
J. Evan Mucha
Examining Attorney
Law Office 106
571-270-1989
evan.mucha@uspto.gov
RESPONSE GUIDANCE