To: | International Truck Intellectual Propert ETC. (ptinfo@navistar.com) |
Subject: | U.S. Trademark Application Serial No. 88882711 - DIAMOND ADVANTAGE - T11019 |
Sent: | August 05, 2020 10:58:13 AM |
Sent As: | ecom103@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 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88882711
Mark: DIAMOND ADVANTAGE
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Correspondence Address: INTERNATIONAL TRUCK INTELLECTUAL PROPERT
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Applicant: International Truck Intellectual Propert ETC.
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Reference/Docket No. T11019
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: August 05, 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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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.
Applicant has applied to register the mark DIAMOND ADVANTAGE in standard characters for “Engine parts for on-highway motor vehicles, namely, fuel system components comprising of fuel pumps, fuel injectors and fuel injector nozzles, intake throttle valves, engine blocks, engine heads, exhaust manifolds for engines, crankcases for engines, engine compressor housings and air management intake systems comprising of engine turbo chargers, exhaust gas recirculation valves and associated passageways” in International Class 12.
The mark in Registration No. 4569763 is DIAMOND ADVANTAGE with a design for “Automotive body supplies in the nature of masking paper” in International Class 16.
The mark in Registration No. 5100547 is DIAMOND ADVANTAGE with a design for “Automotive body fillers” in International Class 1; “Automotive paint supplies, namely, automotive clear paint, automotive lacquer thinner, automotive activators, automotive paint primers and automotive sealers in the nature of paint sealers and sealer coatings for use in the automotive industry” in International Class 2; “Automotive body supplies, plastic sheeting for use as drop cloths” in International Class 17; and “Automotive paint supplies in the nature of mixing cups” in International Class 21.
The cited marks are owned by the same registrant.
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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
The design in registrant’s marks does not avoid the confusion for two reasons.
Second, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Accordingly, the marks in their entireties are considered similar for likelihood of confusion purposes.
Relatedness of the Goods
Applicant’s goods are “Engine parts for on-highway motor vehicles, namely, fuel system components comprising of fuel pumps, fuel injectors and fuel injector nozzles, intake throttle valves, engine blocks, engine heads, exhaust manifolds for engines, crankcases for engines, engine compressor housings and air management intake systems comprising of engine turbo chargers, exhaust gas recirculation valves and associated passageways” in International Class 12.
Registrant’s relevant goods are “Automotive body supplies in the nature of masking paper” in International Class 16 (Registration No. 4569763) and “Automotive paint supplies, namely, automotive clear paint, automotive lacquer thinner, automotive activators, automotive paint primers and automotive sealers in the nature of paint sealers and sealer coatings for use in the automotive industry” in International Class 2 (Registration No. 5100547).
In the present case, applicant’s and registrant’s goods are closely related in that they are all used in automobile engine restoration and are generally sold in the same trade channels. See the attached Internet evidence from Eastwood.com, 4WDLife.com, and Restore-An-Old-Car.com establishing that the relevant goods are used by the same class of consumers in the same field of use and are similar in terms of purpose or use, namely in restoring automobile engines. In addition, the attached Internet evidence from Eastwood.com, JEGS.com, and SummitRacing.com establishes that registrant’s goods (i.e., automotive paint and automotive masking paper) and applicant’s goods (i.e., engine blocks, engine heads, exhaust manifolds for engines, fuel injectors, fuel pumps, intake valves, and engine turbo chargers) are sold through the same trade channels and/or produced by the same entity and sold under the same mark.
Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Based on the foregoing, a likelihood of confusion exists between the applied-for mark and the cited registrations and registration is refused under Section 2(d) of the Trademark Act.
APPLICANT MAY RESPOND
CLASSIFICATION OF GOODS REQUIREMENT
Applicant must adopt the appropriate international classification number for the goods identified in the application. The USPTO follows the International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), established by the World Intellectual Property Organization, to classify goods and services. See 37 C.F.R. §2.85(a); TMEP §§1401.02, 1401.02(a). Proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO. See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).
Please note that 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.
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.
/Joshua Sturman/
Trademark Examining Attorney
Law Office 103
(571) 270-0355
Joshua.Sturman@uspto.gov
RESPONSE GUIDANCE