To: | Technip E&C Limited (TADenys@pbnlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88806260 - HUMMINGBIRD - 5826-111A US |
Sent: | December 13, 2020 07:13:17 PM |
Sent As: | ecom110@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. 88806260
Mark: HUMMINGBIRD
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Correspondence Address: PORZIO, BROMBERG & NEWMAN, P.C.
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Applicant: Technip E&C Limited
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Reference/Docket No. 5826-111A US
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 13, 2020
The examining attorney has received and reviewed the applicant’s response to Office action dated November 19, 2020.
On May 19, 2020, the examining attorney cited U.S. Application Serial No. 88124045. The referenced prior-pending application has since registered. Therefore, registration is refused as follows. The requirements as to the identification of goods and services is continued and maintained.
Registration Refused – Section 2(d) Likelihood of Confusion – As to International Class 37
The applicant’s mark is HUMMINGBIRD for “Construction and maintenance of plants and buildings; advisory services for the building, maintenance and repair of plants.”
The registered mark is HUMMINGBIRD for “Building construction and repair”.
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
In the present case, applicant’s mark is HUMMINGBIRD and registrant’s mark is HUMMINGBIRD. 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.
Therefore, the marks are confusingly similar.
Relatedness of the Services
The applicant’s services are “Construction and maintenance of plants and buildings; advisory services for the building, maintenance and repair of plants”. The registered mark is for “Building construction and repair.” Both the applicant and the registrant provide construction services. In addition, the applicant provides advisory services in the same field.
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, 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 under Trademark Act Section 2(d).
Applicant May Respond
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirement.
Requirement:
Identification of Goods – Clarification Required:
The identification of goods is indefinite and must be clarified. See TMEP §1402.01. Applicant must specify the common commercial or generic name for the goods. If there is no common commercial or generic name, applicant must describe the product and intended consumer as well as its main purpose and intended uses.
Please note: In accordance with the abovementioned requirements, the examining attorney has indicated acceptable changes to the applicant’s identification of goods below in bold font. Applicant may adopt the following identification of goods, if accurate:
Class 01: “Chemicals used in industry; unprocessed plastics; other substances and chemicals and petrochemicals, namely, (specify goods by common commercial name)”
Class 17: “Plastics and plastics materials, namely, (specify goods by common commercial name); plastics for use in manufacture; packing and insulating materials; stopping materials, namely, (specify goods by common commercial name or delete); flexible pipes, not of metal”
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods that are not within the scope of the goods set forth in the present identification.
Recitation of Services – Clarification Required:
The identification of services is indefinite and must be clarified. See TMEP §1402.01. Applicant must specify the common commercial or generic name for the services. If the services have no common commercial or generic name, applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).
Please note: In accordance with the abovementioned requirements, the examining attorney has indicated acceptable changes to the applicant’s recitation of services below in bold font. Applicant may adopt the following identification of services, if accurate:
Class 37: “Construction and maintenance of plants and buildings; advisory services for the building, maintenance and repair of plants” [No Changes Required]
Class 40: “Treatment of materials in the nature of {indicate, e.g., metal, stone, etc.} by means of {indicate, e.g., laser beams, cryogenic processing, etc.}, preparation and improvement of materials, namely, (specify services by common commercial name)”
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Please note that, while the identification of services may be amended to clarify or limit the services, adding to the services or broadening the scope of the services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include services that are not within the scope of the services set forth in the present identification.
Responding to Office Action
For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02.
If applicant has a question or amendment that does not require the payment of a fee, submission of a specimen, response to a statutory refusal or declaration signature, applicant is encouraged to email or telephone the examining attorney to expedite the processing of the application.
How to respond. Click to file a response to this nonfinal Office action.
/Jessica Ellinger Fathy/
Trademark Examining Attorney
Law Office 110
U.S. Patent and Trademark Office
(571) 272-6582
jessica.fathy@uspto.gov
RESPONSE GUIDANCE