UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 76710243
MARK: BORN TO BE WILD
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Olde Granddad Industries, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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.
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(a), 2.65(a); TMEP §§711, 718.03.
Section 2(d) Refusal
Applicant’s mark is BORN TO BE WILD while the registered marks are BORN TO BE WILD (U.S. Registration No. 1758435) and BORN WILD (U.S. Registration No. 4057090).
In this case, Applicant’s mark is identical to the mark in cited U.S. Registration No. 1758435, and has a highly similar commercial impression to the mark in cited U.S. Registration No. 4057090 based on shared wording. Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii).
In this case, “sunglasses” and “sunglass holders” (such as those identified by the applicant) are frequently offered under the same mark, and in the same channels of trade as clothing items such as those specified in cited U.S. Registration No. 1758435. Similarly, “air fresheners” (such as those specified by the applicant) are frequently offered under the same mark, and in the same channels of trade as fragrance and personal care products such as those identified in cited U.S. Registration No. 4057090.
Applicant must respond to the requirement(s) set forth below.
Identification and Classification of Goods
THIS REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
Applicant has classified the following in International Class 005:
“steering wheel covers, … decals, … sunglasses, … travel mugs, license plate frames”.
However, the proper classification(s) are as set forth below. Therefore, applicant must either (1) add the below stated International Classes to the application and reclassify these goods in the proper international class, or (2) delete the above stated wording from the application. See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class requirements specified in this Office action.
The following wording in the identification of goods is unacceptably indefinite and must be clarified because it is not sufficiently clear for proper classification. Moreover, some of the wording is also too broad and could include goods classified in other international classes:
“Seat belt covers, car mats, seat covers, … tire covers, air fresheners, ornamental decorations, including hanging dice and ornamentals, … sunshades, … sunglass holders, CD holders, … and key chains”.
Applicant may amend the identification and classification to the following, if accurate:
“Air fragrancing preparations” [in International Class 003]
“Air deodorizing preparations” [in International Class 005]
“Metal key chains” [in International Class 006]
“Sunglasses; cases for sunglasses; CD cases” [in International Class 009]
“Ornamental decorations specially adapted for affixation to chandeliers” [in International Class 011]
“Fitted fabric covers for vehicle seat belts; seat covers for vehicles; steering wheel covers; spare tire covers; automobile windshield sunshades; license plate frames” [in International Class 012]
“Key chains of precious metal” [in International Class 014]
“Decals” [in International Class 016]
“Leather key chains” [in International Class 018]
“3D decorative plastic ornaments for attachment to cars, walls, windows, mirrors and other solid surfaces; non-metal and non-leather key chains” [in International Class 020]
“Travel mugs” [in International Class 027]
“Floor mats for automobiles” [in International Class 027].
TMEP §§1402.01 and 1402.03. [Note: Bracketed classification listing is provided for informational purposes, and does not appear in identification wording.]
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.
Combined Applications
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional class(es).
(1) LIST GOODS/SERVICES BY INTERNATIONAL CLASS: Applicant must list the goods and/or services by international class; and
(2) PROVIDE FEES FOR ALL INTERNATIONAL CLASSES: Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”).
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).
/Nelson B. Snyder III/
Trademark Examining Attorney
Law Office 107
(571) 272-9284
nelson.snyder@uspto.gov (Informal comms only Include Serial No.)
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using 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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.