From: Lee-Richardson, Brittany

Sent: 7/18/2019 10:00:18 PM

To: TTAB EFiling

CC:

Subject: U.S. Trademark Application Serial No. 87794974 - NUTEK - 47639-00003 - Request for Reconsideration Denied - Return to TTAB - Message 1 of 13

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Attachment Information:

Count: 16

Files: wika-1.jpg, wika-2.jpg, wika-3.jpg, wika2-1.jpg, wika2-2.jpg, wika2-3.jpg, wika3-1.jpg, wika3-2.jpg, wika.jpg, wika4-1.jpg, wika4-2.jpg, wika5.jpg, ext1-1.jpg, ext1-2.jpg, ext1-3.jpg, 87794974.doc

United States Patent and Trademark Office (USPTO) Office Action (Official Letter) About Applicant’s Trademark Application

U.S. Application Serial No. 87794974

Mark: NUTEK

Correspondence Address: JULIE R FENSTERMAKER

BENESCH FRIEDLANDER COPLAN & ARONOFF LLP

200 PUBLIC SQUARE SUITE 2300

CLEVELAND, OH 44114

Applicant: North American Marketing, Inc.

Reference/Docket No. 47639-00003

Correspondence Email Address:

trademark@beneschlaw.com

REQUEST FOR RECONSIDERATION

AFTER FINAL ACTION

DENIED

Issue date: July 18, 2019

Applicant’s request for reconsideration is denied. See 37 C.F.R. §2.63(b)(3). The trademark examining attorney has carefully reviewed applicant’s request and determined the request did not: (1) raise a new issue, (2) resolve all the outstanding issue(s), (3) provide any new or compelling

evidence with regard to the outstanding issue(s), or (4) present analysis and arguments that were persuasive or shed new light on the outstanding issue. TMEP §§715.03(a)(ii)(B), 715.04(a).

However, based on applicant’s identification amendments, the Section 2(d) refusal for U.S. Registration Nos. 5073719 and 5389878 is obviated. Therefore, the applied-for educational and game software goods are no longer subject to the Section 2(d) refusal.

The partial Section 2(d) refusal for likelihood of confusion with U.S. Registration Nos. 2537203, 4825392 and 5426614 is continued and maintained.

With regard to U.S. Registration No. 5426614, applicant argues that the purchasers of laundry equipment are sophisticated and are not impulse buyers. First, applicant provides no evidence to support this claim. Second, the attached evidence from The Home Depot, Ace Hardware, Family Handyman, and SF Gate demonstrates that everyday consumers have easy access to washer machine parts and commonly replace failing parts themselves. Third, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163). Fourth, for products that are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion increases because purchasers of these products are held to a lesser standard of purchasing care. In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (quoting Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000)). Casual purchasers of low-cost, every-day consumer items are generally more likely to be confused as to the source of the goods. In re Davia, 110 USPQ2d 1810, 1818 (TTAB 2014) (citing Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 672, 223 USPQ 1281, 1282 (Fed. Cir. 1984)). The attached evidence from The Home Depot demonstrates that applicant’s and registrant’s types of goods are generally low cost goods. In particular, the evidence demonstrates valves and other washer machine parts can be purchased for as low as $8.98. The attached evidence from Appliance Parts Pros also demonstrates similarly low costs for similar goods. Thus, the same care taken for expensive products, such as vehicles, would not likely be taken in the instant case since the products are relatively inexpensive.

Additionally, applicant argues that the trademark examining attorney “has not addressed the issue of channels of trade…” This is inaccurate. The evidence of record demonstrates that the applied-for and registered goods travel through the same channels of trade. Furthermore, as the registered goods, specifically “apparatus to control and convey ozonated water to washing machines,” which is broad, encompass the applied-for “valves as machine components,” it is clear that such goods travel through

the same trade channels. Also, contrary to applicant’s contention, the fact that the Office classifies goods or services in different classes does not establish that the goods and services are unrelated under Trademark Act Section 2(d). See TMEP §1207.01(d)(v). The determination concerning the proper classification of goods or services is a purely administrative determination unrelated to the determination of likelihood of confusion. In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (citing Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 975, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993)). Therefore, applicant’s argument that applicant is not applying for goods in International Class 011 is irrelevant and unpersuasive.

Applicant argues that applicant’s prior-filed pending application for NAC-NUTEK has been allowed for the same goods and services. First, prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. Id. (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)). Second, the mark in that application is different than the mark in the instant application. In that application, the mark has additional distinguishing matter, which is not found in the instant application. In the instant case, the applied-for mark is phonetically equivalent to the dominant, non-descriptive part of the registered mark and neither mark has additional distinctive, distinguishing matter. Thus, applicant’s characterization of the rationale as to why applicant’s other application for a different mark was allowed is inaccurate and misleading.

Also, applicant’s argument regarding to whom applicant sells/provides its goods/services in comparison to whom registrant sells its goods is unpersuasive. It is unpersuasive because applicant’s nor registrant’s identification of goods/services is limited or restricted as to the class or type of consumers. For example, applicant identifies “valves as machines components” in International Class 007. This is not restricted as to purchaser, and consumers, as shown by the attached evidence from The Home Depot and Ace Hardware, consumers can easily buy valves from general hardware stores for use with their various apparatus, including washing machines.

With regard to U.S. Registration Nos. 2537203 and 4825392, applicant’s arguments are also unpersuasive. Applicant argues that its amendments to the identification of goods “make the difference between the products even more clear” and that applicant is not “applying for electronic measuring instruments or apparatus for testing air quality.” These arguments are unpersuasive. It is reiterated that goods do not need to be identical or even competitive for a finding of relatedness. See On-line Careline Inc. v. Am. Online Inc. Also, the amendment to the identification of goods fails to remove the relatedness of the goods because the goods are still the type of goods that emanate from the same sources and travel through the same trade channels and are used together. The previously attached evidence and newly attached evidence demonstrates relatedness of the goods. For example, the newly attached evidence from:

• Wika – shows that a single entity, Wika, makes the applied-for pressure gauges and valves also makes the registered flow transmitters and switches (U.S. Registration No. 2537203) and air quality apparatuses (4825392) under the same name;

• Transact – shows that a single entity, Extech, makes the applied-for pressure gauges/meters also makes the registered air quality apparatuses (U.S. Registration No. 4825392) under the same name;

• Transact – shows that a single entity, Dwyer Instruments (see also attached evidence from Dwyer Instruments demonstrating the company also retails its products), makes the applied-for pressure gauges and valves also makes the registered transmitters (U.S. Registration No. 2537203) and air quality apparatuses (U.S. Registration No. 4825392) under the same name;

• PCE – shows that pressure gauges are used in connection with transmitters (U.S. Registration No. 2537203);

• Testo – shows that a single entity, Testo, makes the applied-for valves and registered transmitters (U.S. Registration No. 2537203) and air quality apparatuses (U.S. Registration No. 4825392) under the same name;

• Omega, Ametek and PTLF Process, LLC – shows the applied-for pressure gauges, valves and pressure controllers and registered transmitters and switches (U.S. Registration No. 2537203) travel through the same narrow trade channels; and

• Akron – shows valve controllers encompass flow meters.

Furthermore, the attached evidence from Wika and Clean Alert demonstrates that air pressure gauges work in connection with air quality sensors to measure air quality, and that pressure gauges are part of the air quality measuring process. Therefore, the applied-for “pressure gauges” are directly related to the registered “apparatus for testing air quality by measuring volatile organic compounds in the air.”

Moreover, the trademark examining attorney has attached additional evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case. This evidence shows that the goods listed therein, namely, flow transmitters and switches, valves, controllers, and air quality testing apparatuses, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii). See U.S. Registration Nos. 4541441, 4735498, 4755172, 5123723, 5778443, and 5784192.

Applicant’s argument that the two registrations coexist along with U.S. Registration No. 5073719; therefore, the field is crowded. First, again, actions by prior trademark examining attorneys do not bind the USPTO or the Board. On the same note, contrary to applicant’s contention, actions of prior trademark examining attorneys do not amount to an “acknowledgment on the USPTO’s part that consumers can distinguish between these marks without being confused.” Second, applicant has failed to demonstrate a “crowded field.” Despite applicant’s attempt to relate U.S. Registration No. 5073719,

the goods in such registration are not related to those in U.S. Registration Nos. 2537203 and 4825392; therefore, it does not contribute to the “crowded field” idea for the set of goods in question. Also, three registrations are hardly enough to constitute dilution, and in this case, there are only two relevant registrations. Ultimately, the marks are phonetically equivalent for related goods. Applicant does not deny that the goods related. Instead, applicant states that applicant amended the identification to make the difference among the goods “more clear.” In fact, applicant seemingly acknowledges that the goods are related/similar when arguing that “when USPTO allows registration of multiple, similar marks in connection with similar goods, such action evidences the USPTO’s recognition that consumer confusion is unlikely between the marks and that such marks are entitled only to a relatively narrow scope of protection and can peacefully coexist. Significant weight must be given to any commercial weakness based on third-party use of similar marks for the same or similar goods and services.” Also, the Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that marks deemed “weak” or merely descriptive are still entitled to protection under Section 2(d) against the registration by a subsequent user of a similar mark for closely related goods and/or services. TMEP §1207.01(b)(ix); see King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401, 182 USPQ 108, 109 (C.C.P.A. 1974); In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010).

Again, applicant argues the consumers in question are not impulse purchasers but are sophisticated, but, as previously explained, that does not mean that the consumers are knowledgeable about trademarks or immune from trademark confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP.

It is noted that applicant fails to argue against the relatedness of the services.

After careful review, applicant’s arguments are deemed unpersuasive. Overall, applicant does not strongly argue against nor provide evidence against the relatedness of the goods and services. Instead, applicant focuses mostly on other registrations and supposed dilution. Ultimately, however, there is no dilution with respect to the applied-for and registered marks and their goods/services. Also, with the applied-for mark being phonetically equivalent and very similar in appearance to the only/dominant term in the registered marks and the associated goods/services being closely related, as shown by the evidence of record, consumer confusion is likely. 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, the following refusal made final in the Office action dated December 28, 2019 is maintained and continued: partial refusal under Trademark Act Section 2(d) for a likelihood of confusion. For clarity, the partial refusal applies to the following goods and services only:

International Class 006: Manually operated metal and metal alloy valves for the controlling of liquids, fluids and gases; parts and accessories for manually and mechanically operated metal and metal alloy valves for the controlling of fluids, liquids, and gases, namely, tubing slips and spiders, welding fittings and flanges and tube connectors including return bend, terminal, corner, t and elbow fittings, all of the foregoing being metal and metal alloy; manually operated metal and metal alloy valves; hand operated metal or metal alloy pressure controllers for valves

International Class 007: Valves as machine components; valves being parts of and for incorporation in industrial machinery

International Class 009: Fluid flow controlling devices, namely, automatic pressure relief valves and automatic pressure regulating valves; valves controlled by pressure for controlling and regulating the flow of oil, gas, liquid or fluid not being parts of plumbing, heating, cooling installations or machines; pressure controllers and valves, namely, remote controlled and automatic pressure controllers and valves for controlling the pressure of fluids, liquids and gases and pressure gauges; automatic valves for regulating the flow of fluids, liquids and gases; manually and mechanically operated metal and metal alloy pressure controllers for valves

International Class 035: Retail store services featuring valves; wholesale store services featuring valves; online retail store services featuring valves; catalogue ordering services featuring valves; online catalogue ordering services featuring valves; distributorship services in the field of valves; commercial resale, namely, retail store, online retail store, wholesale store, catalogue ordering and online catalogue ordering services featuring valves

International Class 042: Design and development of valves; testing and inspection of valves

The refusal does not apply to the following:

International Class 009: educational computer software featuring instruction in curriculum course content and outdoor education; educational computer software featuring instruction in valve installation, operation and repair; educational computer and electronic games software downloadable from a global computer network featuring instruction in curriculum course content and outdoor education; downloadable application for mobile devices, namely, mobile phones, smartphones, tablets,

and laptops, featuring educational computer and electronic games available via the internet featuring instruction in curriculum course content and outdoor education; downloadable applications for mobile devices, namely, mobile phones, smartphones, tablets, and laptops being educational software featuring instruction in curriculum course content and outdoor education available via the internet; downloadable applications for mobile devices, namely, mobile phones, smartphones, tablets, and laptops being educational software featuring instruction in mechanical and automated flow control devices, valve installation, operation and repair, available via the internet; educational computer and electronic game software downloaded via the internet featuring instruction in curriculum course content and outdoor education

International Class 035: advertising the goods and services of others, namely, valves

International Class 040: manufacture of valves for regulating the flow of fluids, liquids and gases to the order and specification of others; machine shop services, namely, machining parts for others

See TMEP §§715.03(a)(ii)(B), 715.04(a).

In addition, the following requirement made final in that Office action is satisfied: the classification and identification requirements.

See TMEP §§715.03(a)(ii)(B), 715.04(a).

As applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal. See TMEP §715.04(a).

/Brittany Lee-Richardson/

Trademark Examining Attorney

Law Office 116

571.272.9750

Brittany.Lee-Richardson@uspto.gov