UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/668656

 

The assigned trademark examining attorney has reviewed the referenced application and has determined the following:

 

I. SEARCH OF THE OFFICE RECORDS

Trademark Act Section 2(d) Refusal to Register

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the mark in U.S. Registration No. 2394970 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).  TMEP §§1207.01 et seq. 

 

Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).

Applicant’s Mark is Identical in Appearance, Sound and Connotation to Registered Mark

Applicant's mark is “UNIWARE”. Registrant’s mark is “UNIWARE.” Applicant’s mark is identical in appearance, sound and connotation to the registered mark. Marks need only be similar in appearance or sound or connotation to satisfy the similarity requirement of a likelihood of confusion analysis. The similarity of the marks becomes the dominant factor in a likelihood of confusion analysis when the marks are identical.

 

Applicant’s Goods are Closely Related to Goods of Registered Mark

The goods/services of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods/services come from a common source.  In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).  TMEP §1207.01(a)(i). 

 

Applicant’s goods are identified as “Cookware, namely, pots and pans.”

 

Registrants' goods are identified as “COOKERY MOLDS, COOKIE CUTTERS, COOKIE JARS, METAL COOKING PANS, COOKING POTS, NON-ELECTRIC PRESSURE COOKERS, NON-ELECTRIC PRESSURE SAUCEPANS, HOUSEHOLD UTENSILS, NAMELY CAKE PANS.”

 

Applicant’s identification of goods includes the goods listed in registrant’s identification.  As a result, the goods are related because they are, in part, identical.

 

Because the marks are identical and the goods overlap, confusion as to source is likely.  Thus, registration is refused under Trademark Act Section 2 (d) based on a likelihood of confusion.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

Prior Pending Mark

In addition to the above grounds for refusal, please be advised that a potentially conflicting prior pending mark may also present a bar to registration.

 

Information regarding pending Application Serial No. 78860876 is enclosed.  The filing date of the referenced application precedes applicant’s filing date.  There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  If the referenced application registers, registration may be refused in this case under Section 2(d).  37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action.  The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.

 

 

If applicant chooses to respond to the refusal to register, then applicant must also respond to the following requirements.

 

II. REQUIREMENTS

 

Applicant May Not Assert Different Filing Basis For the Same Goods

Applicant asserts use of the mark in commerce for “Cookware, namely, pots and pans” and applicant asserts that it has a bona fide intent to use the mark in commerce for the same goods and/or services.  Applicant must delete one basis or divide the goods and/or services between the two bases, as appropriate. An applicant may not assert both use of the mark in commerce, under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), and intent to use the mark in commerce, under Trademark Act Section 1(b), 15 U.S.C. § 1051(b), for the same goods or services.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

 

This application does not contain a specimen of use required to satisfy the Use-Basis filing requirements discussed below.

 

Use-Basis Application Requirements

Where an application is based on use of the mark in commerce, applicant must satisfy the following requirements:

 

(1)  Applicant must submit a statement that “the mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application on the application filing date;”

 

(2)  Applicant must specify the date of first use of the mark anywhere on or in connection with the goods or services;

 

(3)  Applicant must specify the date of first use of the mark in commerce as a trademark or service mark; and

 

(4)  Applicant must submit one “specimen” that shows the mark used on the goods, or in connection with the services, for each class of goods and services (i.e., showing how the applicant actually uses the mark in commerce).  If the specimen was not filed with the initial application, applicant must submit a written statement that “the specimen was in use in commerce at least as early as the application filing date.”

 

These requirements must be verified by applicant in an affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33.  Trademark Act Section 1(a), 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1) and 2.59(a); TMEP §806.01(a).

 

Intent to Use Application Requirements

An application based on a bona fide intention to use the mark in commerce must include the following statement, verified with an affidavit or a signed declaration under 37 C.F.R. §§2.20 and 2.33:

 

Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.

 

Trademark Act Section 1(b), 15 U.S.C. §1051(b); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b).

 

 

Unclear if Standard Character Drawing Intended

Applicant asserts in the application that the proposed mark was a standard character mark and also a special form drawing. It cannot be both. Because of the degree of stylization of the font used to depict the mark on the drawing page, applicant must clarify whether a standard character drawing format or a special-form drawing format was intended.  TMEP §§807.03 et seq. and 807.04 et seq.  If a standard character drawing was intended, then applicant must submit the following statement:  “The mark consists of standard characters without claim to any particular font, style, size, or color.”  37 C.F.R. §2.52(a).  If a special-form drawing was intended, then applicant must state so for the record.  37 C.F.R. §2.52(b).

 

In a standard character drawing, the mark on the drawing consists of only words, letters or numbers, but does not include any designs or claims as to particular font, style, size, or color.  A registration for a mark using a standard character drawing affords protection not only for the standard character version of the mark, but for any possible renderings of the mark, as long as those renderings do not contain any design elements; i.e., a registered standard character drawing of the mark gives protection for display on the specimens in any lettering style.  A special-form drawing, on the other hand, shows the mark in stylized letters and/or with a design element and provides protection for only that specific rendering.  37 C.F.R. §2.52; TMEP §§807.03 et seq. 807.04 et seq.

 

 

 

Applicant’s Response

There is no required format or form for responding to this 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.  However, if applicant responds on paper via regular mail, the response should include the following information:  (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and (4) applicant's telephone number.

 

The response should 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 simply set forth in writing the required changes or statements and request that the Office enter them into the application record. 

 

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, etc.).  TMEP §§712 et seq.

 

 

 

 

/Anthony M. Rinker/

Trademark Examining Attorney

571-272-5491

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.