Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 8/18/2009

 

The above-identified application has been reinstated. The examining attorney has reviewed the applicant’s response, filed on 7/21/09, to the suspension notice e-mailed on 10/22/08, and has determined as follows:

 

1. A supplemental revival search has revealed no additional registered or pending marks that are likely to cause confusion with the applicant’s mark.

 

2. The Section 2(d) refusal is continued with respect to Class 28 only, but is withdrawn as to Classes 9 and 16.

 

3. The identification in the U.S. application is beyond the scope of the identification in the foreign registration.  The applicant must address this discrepancy.

 

4. The requirement that the applicant amend the identification is continued.

 

5. The multi-class application requirements are continued.

 

Please see below for details of numbers 2, 3, 4 and 5 above.

 

PARTIAL CONTINUED REFUSAL:  WITH RESPECT TO CLASS 28 ONLY, REFUSAL TO REGISTER DUE TO LIKELIHOOD OF CONFUSION WITH REG. NO. 2371678 IS CONTINUED

 

As to Class 28 only, the refusal to register due to likelihood of confusion with U.S. Reg. No. 2371678 is continued.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

The applicant has applied to register PAINKILLER (standard character mark) for, in pertinent part:

 

Cl. 28:  Games, other than those that pertain to bicycles, and playthings, other than bicycles, namely, play and action figures and accessories therefor, amusement park rides, playing cards, balloons, rubber balls, rubber action balls, sport balls, foam balls, basketballs, footballs, playground balls, foam balls, bath toys, board games, toy boxes, card games, cases for play accessories, child crib toys, dolls and doll accessories, face masks, carnival masks, toy masks, musical toys, pinball machines, plush toys, puppets, stuffed toys, inflatable and play swimming pools

 

The registered mark is PAINKILLER (typed mark) for bicycles.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 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 of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

 

Comparison of the Marks

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

 

In the present case, the marks are identical.

 

Comparison of the Goods

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

 

Although the applicant has amended the pertinent portion of the identification to exclude bicycles and bicycle-related games, this amendment does not obviate the likelihood of confusion since it is not unusual for bicycles and other types of toys to travel in the same or similar channels of trade, e.g. toy stores, the toy sections of department stores, etc., and to be offered to the same or similar customers. 

 

Furthermore, it is common for a single entity to use the same mark to identify the source of goods such as those in the applicant’s Class 28 identification and bicycles.  In this regard, attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods and/or services as those of applicant and registrant in this case.  These printouts have probative value to the extent that they serve to suggest that the goods listed therein, namely, board games, dolls, basketballs and/or sport balls on the one hand, and bicycles on the other hand, are of a kind that may emanate from a single source.  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).

 

Please see attached U.S. Reg. Nos. 3303688, 2743105, 3187746 and 3450299 (showing the relationship between basketballs/sport balls on the one hand and bicycles on the other); U.S. Reg. Nos. 3376477, 3356148, 3038741, 2921374 and 3187746 (showing the relationship between dolls on the one hand and bicycles on the other); and U.S. Reg. Nos. 3038741, 2921374, 3140908 and 2751597 (showing the relationship between board games on the one hand and bicycles on the other). 

 

Since the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods.  Therefore, applicant’s mark is not entitled to registration.

 

Response Guidelines For This Refusal

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by doing one of the following:

 

(1)        Deleting the class to which the refusal pertains;

 

(2)        Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition in the classes to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110.05, 1403.03 (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).; or

 

(3)        Amending the basis, if appropriate.  (The basis cannot be changed for applications filed under Trademark Act Section 66(a).  TMEP §1904.01(a).)

 

FOREIGN REGISTRATION BEYOND SCOPE OF THE IDENTIFICATION OF GOODS/SERVICES IN THE U.S. APPLICATION

 

The following wording in the identification of goods and/or services in the U.S. application is unacceptable because it exceeds the scope of the goods and/or services in the foreign application or registration:

 

Cl. 18:  Gymnastic and sporting articles, namely, duffel bags, sports bags, canvas tote bags and knapsacks; Games, other than those that pertain to bicycles

 

And

 

Cl. 28:  Games, other than those that pertain to bicycles, and playthings, other than bicycles, namely, play and action figures and accessories therefor, amusement park rides, playing cards, balloons, rubber balls, rubber action balls, sport balls, foam balls, basketballs, footballs, playground balls, foam balls, bath toys, board games, toy boxes, card games, cases for play accessories, child crib toys, dolls and doll accessories, face masks, carnival masks, toy masks, musical toys, pinball machines, plush toys, puppets, stuffed toys, inflatable and play swimming pools Playthings, other than bicycles, namely, play and action figures and accessories therefor, amusement park rides, playing cards, balloons, rubber balls, rubber action balls, sport balls, foam balls, basketballs, footballs, playground balls, foam balls, bath toys, board games, toy boxes, card games, cases for play accessories, child crib toys, dolls and doll accessories, face masks, carnival masks, toy masks, musical toys, pinball machines, plush toys, puppets, stuffed toys, inflatable and play swimming pools  

 

See 37 C.F.R. §2.32(a)(6); TMEP §1012.

 

Therefore, applicant must satisfy one of the following:

 

(1)     Amend the identification of goods and/or services in the U.S. application to correspond to the goods and/or services identified in the foreign application or registration, ensuring that all goods and/or services beyond the scope of the foreign application or registration are deleted from the U.S. application; or

 

(2)     Delete the Trademark Act Section 44 basis for the goods and/or services beyond the scope of the foreign application or registration and rely solely on the Section 1 basis for those goods and/or services.

 

See 15 U.S.C. §§1051, 1126(d)-(e); 37 C.F.R. §§2.32(a)(6), 2.34(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 806.04, 1012, 1402.01(b).

 

PARTIAL CONTINUED REQUIREMENT:  AS TO CERTAIN PORTIONS OF THE IDENTIFICATION ONLY, REQUIREMENT THAT APPLICANT AMEND THE IDENTIFICATION CONTINUED

 

In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant uses indefinite words such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” or “products,” such words must be followed by “namely,” followed by a list of the specific goods identified by their common commercial or generic names.  See TMEP §§1402.01, 1402.03(a).

 

Applicant must use the common commercial or generic names for the services, be as complete and specific as possible, and avoid the use of indefinite words and phrases.  If applicant uses indefinite words and phrases such as “services in connection with,” “such as,” “including,” “and like services,” “systems,” “products,” “concepts,” or “not limited to,” such wording must be followed by “namely,” and a list of the specific services identified by their common commercial or generic names.  See TMEP §§1402.01, 1402.03(a).

 

Identifications of goods/services can be amended only to clarify or limit the goods/services; adding to or broadening the scope of the goods/services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods/. that are not within the scope of the goods set forth in the present identification.

 

The applicant has applied to register the mark for, as amended:

 

Cl. 9:  Entertainment and education computer game software, other than those that pertain to bicycles, for use on the personal computer or global computer network; entertainment and education computer game software, other than those that pertain to bicycles, that is downloadable supplied online from facilities provided on a global computer network, including web sites; interactive computer and video games, other than those that pertain to bicycles, recorded on CD-ROMs, DVDs, cartridges, pre-recorded video cassettes, and entertainment gaming and web consoles and related thereto

 

Cl. 16:  Books and booklets containing information relating to interactive computer games other than those that pertain to bicycles

 

Cl. 18:  Gymnastic and sporting articles, namely, duffel bags, sports bags, canvas tote bags and knapsacks

 

Cl. 25:  Clothing, namely, hats, coats, jackets, pajamas, pants, parkas, shirts, socks, sweaters and underwear; footwear, namely, slippers

 

Cl. 28:  Games, other than those that pertain to bicycles, and playthings, other than bicycles, namely, play and action figures and accessories therefor, amusement park rides, playing cards, balloons, rubber balls, rubber action balls, sport balls, foam balls, basketballs, footballs, playground balls, foam balls, bath toys, board games, toy boxes, card games, cases for play accessories, child crib toys, dolls and doll accessories, face masks, carnival masks, toy masks, musical toys, pinball machines, plush toys, puppets, stuffed toys, inflatable and play swimming pools

 

Cl. 42:  Entertainment and education computer game software services, other than those that pertain to bicycles, that are non-downloadable and supplied for temporary use online from facilities provided on a global computer network, including web sites

 

The wording in italics and bold in the identification of goods in Class 9 is indefinite and must be clarified because the nature of the goods is unclear.  See TMEP §§1402.01, 1402.03.   The applicant must clarify that the gaming consoles are dedicated, if accurate.  Also, the applicant must clarify what is meant by the phrase “and related thereto.”  If it is superfluous, the applicant must delete it.

 

As to the wording in italics in Class 42, this wording is also indefinite and must be clarified because the nature of the services is unclear and, depending on the nature of the services, they may fall into different international classes.  Generally speaking, the service of providing temporary use of non-downloadable computer game software is classified in Class 41, not Class 42.  See TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name for the services.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). 

 

Applicant may substitute the following wording, if accurate: 

 

Cl. 9:  Entertainment and education computer game software, other than those that pertain to bicycles, for use on the personal computer or global computer network; entertainment and education computer game software, other than those that pertain to bicycles, that is downloadable supplied online from facilities provided on a global computer network, including web sites; interactive computer and video games, other than those that pertain to bicycles, recorded on CD-ROMs, DVDs, cartridges, pre-recorded video cassettes, dedicated entertainment gaming and web consoles and [clarify what is meant by “and related thereto”]

 

Cl. 16:  Books and booklets containing information relating to interactive computer games other than those that pertain to bicycles

 

Cl. 18:  Gymnastic and sporting articles, namely, duffel bags, sports bags, canvas tote bags and knapsacks

 

Cl. 25:  Clothing, namely, hats, coats, jackets, pajamas, pants, parkas, shirts, socks, sweaters and underwear; footwear, namely, slippers

 

Cl. 28:  Games, other than those that pertain to bicycles, and playthings, other than bicycles, namely, play and action figures and accessories therefor, amusement park rides, playing cards, balloons, rubber balls, rubber action balls, sport balls, foam balls, basketballs, footballs, playground balls, foam balls, bath toys, board games, toy boxes, card games, cases for play accessories, child crib toys, dolls and doll accessories, face masks, carnival masks, toy masks, musical toys, pinball machines, plush toys, puppets, stuffed toys, inflatable and play swimming pools

 

Cl. 41:  Entertainment and education computer game software services, namely, providing temporary use of non-downloadable electronic games featuring games unrelated to bicycles, the foregoing including such services provided via websites

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

Please note:  The original application included the following goods “plates” in Class 28.  The applicant then amended this to read “plates, souvenir plates, decorative plates” in Class 21.  The applicant must clarify whether it intentionally deleted these goods from the application or not.

 

MULTIPLE – CLASS APPLICATION REQUIREMENTS CONTINUED

 

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on an intent to use the mark under Trademark Act Section 1(b) and/or a foreign registration under Section 44(e):

 

(1)        Applicant must list the goods and/or services by international class; and

 

(2)        Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

 

GENERAL RESPONSE GUIDELINES

 

There is no required format or form for responding to an Office action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online at http://www.gov.uspto.report/teas/index.html.  If applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information:  (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

In the response, applicant should explicitly address each refusal and/or requirement raised in the Office action.  If a refusal has issued, applicant may wish to argue against the refusal, i.e., submit arguments and/or evidence as to why the refusal should be withdrawn and why the mark should register.  To respond to requirements, applicant should set forth in writing the required changes or statements. 

 

The response must be signed by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants).  TMEP §§605.02, 712.  The signer must personally sign and date the response or manually enter their electronic signature in the signature block.  TMEP §605.02

 

If applicant has questions about its application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.

 

 

 

Nancy Clarke

/nancy clarke/

Trademark Examining Attorney

Law Office 102

Tel. (571) 272-9253

Fax (571) 273-9102

 

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 76579083) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 8/18/2009 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=76579083&doc_type=OOA&mail_date=20090818 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 8/18/2009 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.