Offc Action Outgoing

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  77/008295

 

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

 

LIKLIHOOD OF CONFUSION – PARTIAL REFUSAL

 

With respect to the goods “office products,” registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 75507696.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.

 

Taking into account the relevant du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis.  First, the marks are compared for similarities in appearance, sound, connotation and commercial impression.  In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the goods are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely.  In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

 

A)    COMPARISON OF THE MARKS

 

The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 54 USPQ2d 1894, 1890 (Fed. Cir. 2000); Visual Information Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

Applicant’s mark is “REXON.”  Cited registrant’s mark is “REXON.”  The marks are identical in wording.

 

Although applicant’s mark is stylized, registration of a mark in typed form means that the mark may be displayed in any lettering style.  37 C.F.R. §2.52(a).  The rights associated with a mark in typed form reside in the wording itself, and registrant is free to adopt any style of lettering, including lettering identical to that used by applicant.  Therefore, applicant’s presentation of its mark in special form will not avoid likelihood of confusion with a mark that is registered in typed form because the marks could be used in the same manner of display.  See In re Melville Corp., 18 USPQ2d 1386, 1387-88 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987); In re Hester Indus., Inc., 231 USPQ 881, 882, n.6 (TTAB 1986); United Rum Merchants, Ltd. v. Fregal, Inc., 216 USPQ 217, 220 (TTAB 1982); Frances Denney, Inc. v. Vive Parfums, Ltd., 190 USPQ 302, 303-04 (TTAB 1976); TMEP §1207.01(c)(iii).

 

            B) COMPARISON OF THE GOODS

 

The goods of the parties need not be identical or directly competitive to find a likelihood of confusion.  Instead, 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 come from a common source.  On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).

 

Applicant’s refused goods are “office products (excluding furniture).”  Cited registrant’s goods are “facsimile machines.”  The goods are related because facsimile machines are a type of office product.

 

Likelihood of confusion is determined on the basis of the goods as they are identified in the application and the registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990).  Since the identification of the applicant’s goods is very broad, it is presumed that the application encompasses all goods of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers.  TMEP §1207.01(a)(iii).

 

Because the marks are similar and the goods are related, a likelihood of confusion exists to prevent registration of applicant’s mark under Section 2(d) of the Trademark Act with respect to the goods “office products.”

 

RESPONDING TO A PARTIAL REFUSAL

 

Applicant may respond to the stated refusal by doing one of the following:

 

(1)   amending or deleting the goods to which the refusal pertains;

 

(2)   arguing against the refusal of the application as a whole; or

 

(3)   filing a request to divide out the goods and services that have not been refused registration, so that the mark may be published for opposition for those goods or services to which the refusal does not pertain (See 37 C.F.R. §2.87 and TMEP §§1110.05 and 1403.03 regarding the requirements for filing a request to divide).

 

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

 

IDENTIFICATION/CLASSIFICATION OF GOODS AND SERVICES

 

Applicant classified the goods “blueprints” in International Class 35; however, the correct classification is International Class 16.  Applicant must place these goods in International Class 16 of the application.  Additionally, applicant classified the services “appraisal of art” in International Class 35; however, the correct classification is International Class 36.  Applicant must either delete these services or add International Class 36 to the application.  37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §1401.04(b).

 

Also, the wording “printing products,” “photography products; paper products,” “products for artists,” “plastic products for packing; cards,” and “products in plastic” in the identification of goods and services needs clarification because it is too broad and could include goods and services classified in other international classes.  TMEP §§1402.01 and 1402.03.

 

Furthermore, the wording “binding products,” “office products (excluding furniture); teaching and instructional material (excluding devices),” “printing characters; cliches,” “products that serve to caulk, close with tow and isolate; flexible non-metallic pipes and hoses,” “commercial administration; works of office,” “auditing,” “industrial; rent of office teams; billboards,” “copy centre; distribution of propaganda; advertising samples; decoration shop windows; shop windows; advertising design; commercial and advertising exhibitions and fairs; commercial administrations; agencies and procedures; office works; market surveys; business management, namely representation, franchising of marks, commercial web pages, commercial websites” in the identification of goods and services is indefinite and must be clarified.  TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name for the goods and services.

 

The decision as to the proper classification of goods or services is a purely administrative matter within the sole discretion of the United States Patent and Trademark Office.  In re Tee-Pak inc., 164 USPQ 88 (TTAB 1969).

 

Also, please note that the identification of goods and services contains parentheses.  Generally, parentheses and brackets should not be used in identifications.  Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification.  TMEP §1402.12. 

 

Applicant may adopt the following identification of goods and services, if accurate:

 

International Class 1 – “Photography products, namely photographic chemicals, photographic paper, and unexposed photographic film; paper products, namely litmus paper, photosensitive paper, and blueprint paper.”

 

International Class 2 – “Printing products, namely ink cartridges; paper products, namely anti-corrosive paper; products for artists, namely paint for artists.”

 

International Class 3 – “Paper products, namely sandpaper, and cleaning and polishing paper.”

 

International Class 4 – “Paper products, namely lighting paper.”

 

International Class 5 – “Paper products, namely fly paper.”

 

International Class 9 – “Printing products, namely ink jet printers; photography products, namely photographic cameras, photographic flashbulbs, and photographic projectors; office products, namely fax machines, telephones, and computer printers; cards, namely blank smart cards, electronic circuit cards, and memory cards.”

 

International Class 10 – “Photography products, namely X-ray photographs for medical purposes; products in plastic, namely plastic bags for transmitting medical specimens.”

 

International Class 13 – “Paper products, namely blasting paper.”

 

International Class 14 – “Products in plastic, namely plastic watch straps.”

 

International Class 16 – “Printing products, namely printing paper and printing fonts; binding products, namely book bindings, spiral binding machines for office use, and binders; photography products, namely photograph albums, photographs, photographic prints, and plastic pages for holding photographs; paper products, namely art paper, carbon paper, computer paper, construction paper, craft paper, drawing paper, gift wrap paper, office paper, paper, paper boxes, paper folders, paper bags, paper napkins, paper towels, tissue paper, and writing paper; adhesives for stationeries and home use; products for artists, namely artists’ brushes, pencils, pens, painting sets, modeling clay, and painting canvases; paintbrushes; typewriters; office products, namely office binders, hole punchers, office labeling machines, stationery, paper shredders, and staplers; teaching and instructional material, namely printed instructional and teaching materials in the field of {please specify the area of use or subject matter of the materials}; plastic products for packing, namely plastic bags for packing and plastic bubble packs for packaging; cards, namely blank cards, business cards, Christmas cards, file cards, flash cards, gift cards, greeting cards, index cards, note cards, score cards, and Tarot cards; printing characters, namely printing fonts; printing clichés; products in plastic, namely plastic garbage bags, plastic gift wrap, and plastic wrap; blueprints.”

 

International Class 17 – “Photography products, namely photographic splicing tape; plastic products for packing, namely expanded plastic pellets for packaging, plastic film for industrial and commercial packing use, and plastic packing for shipping containers; rubber; gutta-percha; rubber gum and asbestos fabric for use in the manufacture of {please indicate what is being manufactured from these items}; mica; products in plastic, namely plastic foam used for arts and crafts, plastic hoses for plumbing use, and plastic rods and bars; products that serve to caulk, close with tow and isolate, namely weather-stripping sealants in the nature of caulk; flexible non-metallic plumbing and sewage pipes and hoses.”

 

International Class 19 – “Products in plastic, namely plastic crash barriers for roads, plastic conduit for drainage, and plastic wallboards.”

 

International Class 20 – “Products in plastic, namely busts of plastic, door stops of plastic, party ornaments of plastic, plastic key rings, and plastic pill boxes; billboards, namely wooden signboards.”

 

International Class 21 – “Products in plastic, namely plastic ups, plastic plates, and plastic water bottles sold empty.”

 

International Class 22 – “Products in plastic, namely awnings of plastic, plastic ties for home or garden use, and plastic windscreens for use on tennis courts.”

 

International Class 23 – “Products in plastic, namely plastic thread.”

 

International Class 24 – “Products in plastic, namely plastic placemats.”

 

International Class 25 – “Products in plastic, namely plastic baby bibs.”

 

International Class 26 – “Products in plastic, namely artificial flowers of plastic.”

 

International Class 27 – “Products in plastic, namely plastic bath mats.”

 

International Class 28 – “Cards, namely bingo cards and playing cards; products in plastic, namely plastic toy action figures and plastic fishing lure worms.”

 

International Class 30 – “Gum, namely chewing gum and bubble gum.”

 

International Class 35 – “Publicity services; business management; commercial administration of the licensing of the goods and services of others; works of office, namely business administration and office work; import-export agencies; public relations; hiring of personnel; accounting; auditing, namely account auditing and business auditing; commercial consulting; temporary employment agencies; copying of documents; distribution of propaganda, namely distribution of advertisements and commercial announcements; distribution of samples for publicity purposes; retail shop window display arrangement services; design of advertising materials for others; arranging and conducting of fairs and exhibitions for business and advertising purposes; conducting market research surveys.”

 

International Class 36 – “Appraisal of art.”

 

International Class 42 – “Managing web sites for others.”

 

International Class 45 – “Franchising of marks, namely licensing of intellectual property.”

 

Please note that, while the identification of goods and services may be amended to clarify or limit the goods and services, adding to the goods and services or broadening the scope of the goods and services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods and services that are not within the scope of the goods and services set forth in the present identification.

 

For assistance with identifying and classifying goods and 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.

 

MULTIPLE CLASS ADVISORY

 

The application identifies goods and services that are classified in at least 26 classes; however, the fees submitted are sufficient for only three classes.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810-810.01 and 1403.01.

 

Therefore, applicant must either:  (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for the additional classes.

 

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

 

(1)   Applicant must list the goods and services by international class with the classes listed in ascending numerical order; and

 

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

 

37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.

 

COLOR DESCRIPTION

 

Applicant has submitted a color drawing and color claim, but has not submitted the required color location statement.  Applications for color marks must include both a list of the colors that are claimed as a feature of the mark and a description of where the colors appear in the mark.  37 C.F.R. §2.52(b)(1); TMEP §807.07 et seq.  Common color names should be used to describe the colors in the mark, e.g., magenta, yellow, turquoise.  TMEP §807.07(a)(ii).

 

Therefore, applicant must provide a description of where the colors appear in the mark using the following format:  “The color yellow appears in the wording ‘REXON,’ and in the two stripes.  The color brown appears in the outlining of the word ‘REXON.’”

 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

/Jason Paul Blair/

Examining Attorney

Law Office 104

Phone - (571) 272-8856

Fax - (571) 273-8856

 

 

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.