To: | Fulton Group N.A., Inc. (mmyers@mmyerslaw.com) |
Subject: | U.S. Trademark Application Serial No. 90340505 - ENDURA - 20014-END2 |
Sent: | April 30, 2021 01:45:40 PM |
Sent As: | ecom111@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90340505
Mark: ENDURA
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Correspondence Address: LAW OFFICE OF MARK R. MYERS, LLC
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Applicant: Fulton Group N.A., Inc.
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Reference/Docket No. 20014-END2
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: April 30, 2021
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's mark is ENDURA (standard characters) for “Boilers, namely, steam heating boilers, hot water boilers, and hydronic boilers; water heaters; components for heating boilers and water heaters, namely, heat exchangers” in International Class 011.
The cited marks are as follows:
ENDURADRIVE (standard characters) (Reg. No. 5031801) for “Cooling towers, fluid coolers and heat exchangers” in International Class 011;
ENDURAFLOW (standard characters) (Reg. No. 5122801) for “Air cooling apparatus, namely, air cooling towers; Gas condensers not being parts of machines; Heat exchangers not being parts of machines” in International Class 011.
Comparison of 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).
Here, the marks are nearly identical in appearance, sound, commercial impression, and connotation. Specifically, they share the similar, fundamental element of “ENDURA” for related goods. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
Any comparative differences between applicant’s mark and registered mark remains relatively minor and does not substantially mitigate the confusing similarity between them. For example, the fact that the registered marks also contains the words DRIVE and FLOW do not obviate the similarity of the marks for two reasons.
In this instance, the applicant’s mark and the registered marks are extremely similar as they share the common dominant term ENDURA. 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).
Consumers seeing ENDURA in the applicant’s mark would come to the mistaken conclusion that the applicant’s and registrant’s goods emanate from the same source. Overall, the marks are similar and the purchasing public would likely be confused as to the sources of those goods by the similarities between the marks. Thus, the legal test for similarity of the marks favors a finding of a likelihood of confusion.
Comparison of Goods
The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
Both applicant and registrant provide heat exchangers, and therefore those goods are identical. Thus applicant’s and registrant’s goods are related as to heat exchangers.
Further, the attached evidence demonstrates that the same entity commonly provides both registrant’s heat exchangers as well as applicant’s boilers and water heaters, all 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).
Cemline
Patterson Kelley
Reco
For example, Cemline provides water heaters, boilers, and heat exchangers, all under the same Cemline mark.
Since there are no limitations in the cited registration and the subject application, it is presumed that the respective services travel in all normal channels of trade and are offered to all potential relevant consumers. In re i.am.symbolic, llc, 866 F.3d 1315, 123 U.S.P.Q.2d 1744, 1749 (Fed. Cir. 2017); see TMEP § 1207.01(a)(iii).
Moreover, under the second DuPont factor, it is not necessary to prove relatedness as to each and every product/activity listed in the description of goods/services. It is sufficient for a refusal based on likelihood of confusion that relatedness is established for any product/activity encompassed by the identification of goods/services in a particular class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 U.S.P.Q. 986, 988 (C.C.P.A. 1981); In re i.am.symbolic, llc, 116 U.S.P.Q.2d 1406, 1409 (TTAB 2015); Inter IKEA Sys. B.V. v. Akea, LLC, 110 U.S.P.Q.2d 1734, 1745 (TTAB 2014).
Because the goods are sufficiently related, if provided under similar marks, the relevant consumers are likely to be confused as to the source of the goods in the marketplace. Thus, the legal test as to the relatedness of goods favors a determination of a likelihood of confusion.
Therefore, the marks are confusingly similar and the goods are related. Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act because there is a likelihood of confusion as to the source of the goods.
Applicant may substitute the following wording, if accurate:
Class 11: Boilers, namely, steam heating boilers not being parts of machines, hot water boilers, and hydronic boilers; water heaters; components for heating boilers and water heaters, namely, heat exchangers not being parts of machines
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.
ASSISTANCE
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.
Sang Min (Sean) Lee
/Sean Lee/
Sang Min (Sean) Lee
Examining Attorney
LO111
(571) 270-7526
Sang.Lee@uspto.gov
RESPONSE GUIDANCE