Vander Intermediate Holding III Corporation

Trademark Trial and Appeal Board

Dec 22, 2014

No. 86163005 (T.T.A.B. Dec. 22, 2014)

From: McCray, Renee

Sent: 12/22/2014 6:29:25 PM

To: TTAB EFiling

CC:

Subject: U.S. TRADEMARK APPLICATION NO. 86163005 - BLUELINE RENTAL - 128.0005 - Request for
Reconsideration Denied - Return to TTAB - Message 1 of 4

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Attachment Information:
Count: 15
Files: -1.jpg, -2.jpg, -3.jpg, duplicate name 59095 -1.jpg, duplicate name 59095 -2.jpg, duplicate name
59385 -1.jpg, duplicate name 59385 -2.jpg, ATT12904.jpg, 2-1.jpg, 2-2.jpg, 3-1.jpg, 3-2.jpg, 4-1.jpg, 4-
2.jpg, 86163005.doc

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

U.S. APPLICATION SERIAL NO. 86163005

MARK: BLUELINE RENTAL

*86163005*
CORRESPONDENT ADDRESS:
JEFFREY P THENNISCH
INGRASSIA FISHER & LORENZ PC
7010 E COCHISE RD
SCOTTSDALE, AZ 85253

GENERAL TRADEMARK INFORMATION:
http://www.uspto.gov/trademarks/index.jsp

VIEW YOUR APPLICATION FILE

APPLICANT: Vander Intermediate Holding III Corporat ETC.

CORRESPONDENT’S REFERENCE/DOCKET NO:
128.0005
CORRESPONDENT E-MAIL ADDRESS:
docketing@iflllaw.com

REQUEST FOR RECONSIDERATION DENIED

ISSUE/MAILING DATE: 12/22/2014

The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is
denying the request for the reasons stated below. See 37 C.F.R. §2.64(b); TMEP §§715.03(a)(2)(B),
(a)(2)(E), 715.04(a). The requirement(s) and/or refusal(s) made final in the Office action dated
06/06/2014 are maintained and continue to be final. See TMEP §§715.03(a)(2)(B), (a)(2)(E), 715.04(a).
In the present case, applicant’s request has not resolved all the outstanding issue(s), nor does it raise a
new issue or provide any new or compelling evidence with regard to the outstanding issue(s) in the final
Office action. In addition, applicant’s analysis and arguments are not persuasive nor do they shed new
light on the issues. Accordingly, the request is denied.
The filing of a request for reconsideration does not extend the time for filing a proper response to a final
Office action or an appeal with the Trademark Trial and Appeal Board (Board), which runs from the date
the final Office action was issued/mailed. See 37 C.F.R. §2.64(b); TMEP §715.03, (a)(2)(B), (a)(2)(E), (c).
If time remains in the six-month response period to the final Office action, applicant has the remainder
of the response period to comply with and/or overcome any outstanding final requirement(s) and/or
refusal(s) and/or to file an appeal with the Board. TMEP §715.03(a)(2)(B), (c). However, if applicant has
already filed a timely notice of appeal with the Board, the Board will be notified to resume the appeal.
See TMEP §715.04(a).
Applicant argues that registrants’ mark is weak and that, especially given applicant’s amended services,
the mark is entitled to a narrow scope of protection.

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).

With respect to applicant’s and registrant’s goods and/or services, the question of likelihood of
confusion is determined based on the description of the goods and/or services stated in the application
and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys.
Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).

Absent restrictions in an application and/or registration, the identified goods and/or services are
“presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc.,
671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard
Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Additionally, unrestricted and
broad identifications are presumed to encompass all goods and/or services of the type described. See In
re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB
1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).

In this case, the marks share the identical, dominant wording BLUELINE. The weakness or dilution of a
particular mark is generally determined in the context of the number and nature of similar marks in use
in the marketplace in connection with similar goods and/or services. See Nat’l Cable Television Ass’n, Inc.
v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).

Evidence of weakness or dilution consisting solely of third-party registrations, such as those submitted
by applicant in this case, is generally entitled to little weight in determining the strength of a mark,
because such registrations do not establish that the registered marks identified therein are in actual use
in the marketplace or that consumers are accustomed to seeing them. See AMF Inc. v. Am. Leisure
Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Davey Prods. Pty Ltd., 92
USPQ2d 1198, 1204 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1639 (TTAB 2009); Richardson-
Vicks Inc. v. Franklin Mint Corp., 216 USPQ 989, 992 (TTAB 1982). Furthermore, the goods and/or
services listed in the third-party registrations submitted by applicant are different from those at issue
and thus do not show that the relevant wording is commonly used in connection with the goods and/or
services at issue.

Moreover, with respect to the services, the identification set forth in the registrations has no restrictions
as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these
services travel in all normal channels of trade, and are available to the same class of purchasers.
Further, the registrations use broad wording to describe the services and this wording is presumed to
encompass all goods and/or services of the type described, including those in applicant’s more narrow
identification. Accordingly, The Section 2(d) final refusal is maintained and continued.

/Renee McCray/
Trademark Examining Attorney
U.S. Patent and Trademark Office
Law Office 111
571.272.9388
renee.mccray@uspto.gov