UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/698384
MARK: WONDER BAR
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: R.M. Industries, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
THIS LETTER REPLACES THE OFFICE ACTION OF EARLIER TODAY BECAUSE THE STANDARD CHARACTER CLAIM REQUIREMENT WAS INADVERTENTLY OMITTED FROM THE EARLIER LETTER. THIS LETTER IS IDENTICAL TO THE EARLIER LETTER, EXCEPT FOR THE ADDITION OF THE STANDARD CHARACTER CLAIM REQUIREMENT IN THIS LETTER. THE EXAMINING ATTORNEY APOLOGIZES FOR ANY CONFUSION.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The proposed mark is WONDER BAR for deodorizing bar of mineral material for personal use in removing odors from hands, in Class 3.
The registered mark is WÜNDERBAR! for soap for the face, hands and body, in Class 3.
The applicant’s deodorizing bar is related to the registrant’s soap, as both goods are used on the skin to remove odors. Attached are copies of printouts of 15 registrations 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 registrations are attached as a representative sample. These printouts have probative value to the extent that they serve to suggest that the goods and/or services listed therein, namely, soap and deodorant, are of a kind that may emanate from a single source. In re Infinity Broad. Corp. of Dallas,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).
Consumers interested in goods for application to the skin to remove odors will encounter the parties’ goods in the same channels of trade. The goods 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, it is sufficient that the goods are related in some manner and/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 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).
Consumers who see the parties’ similar marks used on their related goods are likely to be confused about the source of the goods.
EARLIER FILED PENDING APPLICATION
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant must respond to the requirement(s) set forth below.
STANDARD CHARACTER CLAIM REQUIRED
Applicant must submit the following standard character claim: “The mark consists of standard characters without claim to any particular font style, size, or color.” See 37 C.F.R. §2.52(a); TMEP §807.03(a).
BAR is defined as:
b : a solid piece or block of material that is longer than it is wide <a bar of gold>
"bar." Merriam-Webster Online Dictionary. 2009.
Merriam-Webster Online. 14 October 2009
<http://www.merriam-webster.com/dictionary/bar>
See attachment.
The following is the accepted standard format for a disclaimer:
No claim is made to the exclusive right to use “BAR” apart from the mark as shown.
TMEP §1213.08(a)(i).
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney.
/Ellen Awrich/
Trademark Examining Attorney
Law Office 116
571-272-9123
ellen.awrich@uspto.gov
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.