UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE: 3/31/2015

 

 

THIS IS A FINAL ACTION.

 

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on March 09, 2015.

 

In a previous Office action dated September 08, 2014, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for likelihood of confusion with a registered mark and Trademark Act Section 2(e)(1) for a mark that merely describes a feature of the applicant’s goods.  In addition, applicant was required to satisfy the following requirement:  amend the identification of goods and respond to a request for information.

 

The examining attorney has thoroughly reviewed the applicant’s response and determined the following.  The identification of goods is now acceptable; thus, the identification of goods requirement is SATISFIED.  In addition, the request for information requirement is SATISFIED.  The arguments presented in response to the Section 2(d) Refusal and Section 2(e)(1) Refusal are not persuasive.  Thus, for the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 3686045.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).  And, the refusal under Trademark Act Section 2(e)(1) is now made FINAL for the reasons set forth below.  See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b). 

 

SUMMARY OF ISSUES MADE FINAL:

 

• Section 2(d) Refusal—Likelihood of Confusion
• Section 2(e)(1) Refusal—Mark is Merely Descriptive

 

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. 3686045.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

In the instant case, applicant has applied to register the mark LOW PROFILE for, as amended, “Shower enclosure curbs; shower bases in the nature of floor pans for shower enclosures; shower enclosures; plumbing fixtures, namely molded and fabricated shower floor pans in the nature of shower bases” in Class 11.

 

The mark in Registration No. 3686045 is PROFILE for “Shower receptors” in Class 11.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); TMEP §1207.01(b).

 

In the instant case, applicant’s mark LOW PROFILE is confusingly similar to the mark PROFILE in Registration No. 3686045.  Specifically, the word PROFILE in the applicant’s mark is identical in sound and appearance to the entirety of the registrant’s mark.  Further, the word PROFILE in both marks conveys a highly similar meaning of a side view of an object.  See https://www.ahdictionary.com/word/search.html?q=profile. 

 

It appears that applicant has merely added a term to a registered mark.  Generally, adding a term to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

Moreover, because the registered mark is wholly encompassed within applicant’s mark, purchasers are likely to believe that applicant’s mark merely identifies an additional product line of shower enclosures.  That is, purchasers are likely to believe that the LOW PROFILE mark identifies a line of low-threshold shower pans and curbs provided by the PROFILE brand of shower products.  Accordingly, purchasers are likely to believe—mistakenly—that the marks identify the same source of shower products.  Thus, the marks are confusingly similar

 

Applicant’s Arguments

 

Applicant argues that the word PROFILE in the registrant’s mark could convey a variety of arbitrary meanings, including “a representation of something in outline” or “a concise biographical sketch”, while the applicant’s mark LOW PROFILE “is suggestive of height”.  Both marks include the word PROFILE, and when purchasers familiar with the PROFILE brand of shower curbs encounter shower enclosures offered under the mark LOW PROFILE, they will mistakenly believe the marks identify the same source of shower goods.

 

Relatedness of the Goods

 

The goods of the parties need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

 

The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

In this case, the applicant has identified “Shower enclosure curbs; shower bases in the nature of floor pans for shower enclosures; shower enclosures; plumbing fixtures, namely molded and fabricated shower floor pans in the nature of shower bases” and the registrant has identified “shower receptors”.  First, the newly attached entry from an online plumbing dictionary defines “shower receptor” as “a one-piece base (floor) unit used as a shower, for example, to catch water and direct it to a center drain.”  See http://www.plumbingproducts.com/plumbing-terms-s.html; see also http://dictionary.reference.com/browse/receptor.  A “shower base” is defined as “a preformed, prefinished vessel installed as the finished floor of a shower compartment, and which is provided with a connection point to a sanitary drainage system.”  See http://www.showerrepairsplus.com.au/Shower_Repair_Glossary/shower_base.html; http://www.wisegeek.com/what-is-a-shower-base.htm.  A “shower enclosure” is “a water tight structure with enclosing walls, a draining floor and door or open access way.”  See http://www.homewyse.com/definitions/shower_enclosure.html.  And, a shower curb is “a raised edge or border of a shower.”  See http://www.plumbingproducts.com/plumbing-terms-c.html.  Accordingly, the applicant and registrant both provide component parts of a shower stall.

 

Moreover, the previously attached websites from Bath Authority states that “shower bases” are “also referred to as shower receptors, shower trays or shower floors”.  See also the previously attached website from The Onyx Collection; http://www.wisegeek.com/what-is-a-shower-base.htm.  Therefore, the applicant’s identified shower bases seem to identify the same goods as the registrant’s identified shower receptors.  For example, the newly attached website from Sterling Plumbing shows that the store lists “shower receptors” under the heading “shower bases”.  See http://www.sterlingplumbing.com/baths-and-showers/shower-bases/product-list; see also http://www.lowes.com/Bathroom/Showers-Shower-Accessories/Shower-Bases-Walls/_/N-1z0x802/pl#!; https://www.inprocorp.com/endurant-washroom-systems/solid-surface-shower-bases; http://www.plumbersurplus.com/Cat/Shower-Bases-Shower-Pans/764/List; the previously attached website from the registrant.  Thus, the goods are identical.

 

Furthermore, the applicant’s shower enclosures and curbs are related to the registrant’s shower receptors because many companies that provide enclosures and curbs provide receptors.  For example, the previously attached websites from Custom Building Products, KBRS, and Noble Company in addition to the newly attached website from Schluter Shower System shows that the companies all provide shower receptors and shower curbs.  See http://www.schluter-shower-system.com/kerdi-shower-pan.html; http://www.schluter-shower-system.com/kerdi-shower-curb.html.  The newly attached websites from Vigo, American Bath Enterprises, Inc., DreamLine, and Innovate Building Solutions all show that the companies provide shower enclosures and shower receptors.  See http://www.vigoindustries.com/catalog/bathroom_shower_bases; http://www.vigoindustries.com/catalog/bathroom_shower_enclosures; http://americanbathind.com/products/shower-enclosures.html; http://americanbathind.com/products/shower-pans.html; http://www.bathauthority.com/shower_enclosures.asp; http://innovatebuildingsolutions.com/products/bathrooms/fleurco-glass-shower-enclosures; http://innovatebuildingsolutions.com/products/bathrooms/solid-surface-shower-pan-wall-panels.  Furthermore, the newly attached website from the registrant shows that the company has provided shower enclosures.  See http://www.us.kohler.com/us/search/searchResults.jsp?enableRedirect=true&all=true&filter-products-type=false&filter-parts-type=false&filter-techRef-type=false&filter-helpTopics-type=false&searchTerm=enclosure&pageName=globalSearch&fromPage=search&_requestid=148961#.  This evidence establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark.  Accordingly, when purchasers encounter shower enclosures, shower curbs, and shower receptors all offered under similar marks, they are likely to be confused as to the source of the goods.  Therefore, 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).

 

Evidence obtained from the Internet may be used to support a determination under Trademark Act Section 2(d) that goods are related.  See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).

 

Applicant’s Arguments

 

Applicant does not provide any arguments against the examining attorney’s determination that the goods are related, thereby conceding that the goods are related.

 

In summary, the marks are confusingly similar and the goods are related.  Therefore, purchasers are likely to be confused as to the source of the goods. 

 

Thus, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 3686045.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b). 

 

SECTION 2(e)(1) REFUSAL – MARK IS MERELY DESCRIPTIVE

 

Registration is refused because the applied-for mark merely describes a feature of applicant’s goods.  Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

 

A mark is merely descriptive if it describes a feature of an applicant’s goods.  TMEP §1209.01(b); see, e.g., DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)). 

 

In the instant case, applicant has applied to register the mark LOW PROFILE for, as amended, “Shower enclosure curbs; shower bases in the nature of floor pans for shower enclosures; shower enclosures; plumbing fixtures, namely molded and fabricated shower floor pans in the nature of shower bases” in Class 11.

 

The term LOW is defined as “Having little relative height; not high or tall.”  See https://www.ahdictionary.com/word/search.html?q=low.  The term PROFILE is defined as “A side view of an object or structure.”  See https://www.ahdictionary.com/word/search.html?q=profile.  Accordingly, when purchasers encounter the wording LOW PROFILE in the applicant’s mark, they will immediately understand that applicant’s shower goods have little relative height when viewed from the side.  See also the previously attached Oxford Dictionary entry for “low profile”.  Moreover, the wording LOW PROFILE is frequently used in the shower industry to describe shower bases that feature low thresholds or curbs that are shorter than normal.  For example, the newly attached website from Innovate Building Solutions states:

 

“Since people have different levels of mobility the design of the curb of the shower pan is very important – and more options can create a safer showering environment. With a solid surface pan the options include full height, low profile and built in ramp entries (to create an accessible shower design).”

 

See http://blog.innovatebuildingsolutions.com/2013/06/07/solid-surface-shower-bases-%E2%80%93-advantages-disadvantages-product-options/; see also http://www.intlmarbleindustries.com/shower-bases/low-profile/; http://www.comfortplusbaths.com/Residential_Products/Low_Entry_Showers/; http://www.bestbath.com/Product/Shower%20Pans/379/P3838RB1T; http://www.ehow.com/how_7662749_do-low-profile-shower-tray.html; the previously attached websites from MTI, Onyx Collection, Sterling, and DreamLine.  Moreover, the applicant’s website shows that its “High Definition Color Shower Pans” feature a “Low profile curb”.  See https://www.whitewaterpro.com/shower-pans/.  Therefore, the applied-for mark is merely descriptive of a feature of applicant’s goods. 

 

Applicant’s Arguments

 

The applicant argues that the wording LOW PROFILE is suggestive, not descriptive, of the applicant’s goods because “it would require some imagination, thought or perception to reach a conclusion that the height of the curb is low.  If that is the case, then the descriptive wording would be “Low Height Profile” rather than the present trademark.”  However, the overwhelming use of the exact phrase LOW PROFILE in the shower industry shows that the applied-for mark is descriptive of the identified shower bases.  Accordingly, when purchasers encounter the wording LOW PROFILE on shower bases, enclosures, and curbs, they will understand the wording as merely describing the height of the shower curb.  Thus, the wording merely describes a feature of the applicant’s goods.

 

Therefore, the refusal under Trademark Act Section 2(e)(1) is now made FINAL.  See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).

 

Supplemental Register Advisory

 

Although an amendment to the Supplemental Register would normally be an appropriate response to a Section 2(e)(1) Refusal, such a response is not appropriate in the present case.  The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76(b), (c) has been timely filed.  37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.

 

If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the effective filing date of the application will be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(e) for the amendment to allege use.  37 C.F.R. §2.75(b); TMEP §§816.02, 1102.03.  In addition, the undersigned trademark examining attorney will conduct a new search of the Office records for conflicting marks based on the later application filing date.  TMEP §§206.01, 1102.03.

 

Although registration on the Supplemental Register does not afford all the benefits of registration on the Principal Register, it does provide the following advantages:

                               

• The registrant may use the registration symbol ®;
• The registration is protected against registration of a confusingly similar mark under Trademark Act Section 2(d);
• The registrant may bring suit for infringement in federal court; and
• The registration may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements.

 

See 15 U.S.C. §§1052(d), 1091, 1094; TMEP §815. 

 

RESPONSE GUIDELINES

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       A response that fully resolves all outstanding refusals.

 

(2)       An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusals in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

 

 

 

/Elizabeth F. Jackson/

Elizabeth F. Jackson

Trademark Examining Attorney

Law Office 113

(571) 272-6396

Elizabeth.Jackson@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.