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  77/010945

 

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

 

Likelihood of Confusion

Registration of the proposed mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1411045 and 1824374.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registrations.

 

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 or services 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.

 

Similarities of the Marks

The applicant’s mark is a highly stylized VL.  The registered marks are both highly stylized VL.  All the marks are identical.

 

If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981); TMEP §1207.01(a).

 

Relatedness of the Goods and the Channels of Trade

The goods in the present application and Registration No. 1411045 are essentially the very same goods.  The goods in Registration No. 1824374 are related gift wrapping paper.

 

The similarities among the marks and the goods are so great as to create a likelihood of confusion among consumers.  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).  Accordingly, the mark is refused registration on the Principal Register under Section 2(d).

 

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

 

Ownership of Cited Registrations

If the marks in the cited registrations have been assigned to applicant, then applicant must prove ownership of those marks.  TMEP §812.01.  Applicant may record the assignment with the Assignment Services Division of the Office.  Trademark Act Section 10, 15 U.S.C. §1060; 37 C.F.R. §3.25; TMEP §§503 et seq.  Applicant should then notify the trademark examining attorney when the assignment has been recorded.

 

In the alternative, applicant may submit evidence of the assignment of the marks to the applicant, such as: (1) documents evidencing the chain of title; or (2) an explanation of the chain of title (specifying each party in the chain, the nature of each conveyance, and the relevant dates), supported by an affidavit or signed declaration under 37 C.F.R. §2.20.  37 C.F.R. §3.73; TMEP §502.02(a).

 

Applicant should note the following additional ground for refusal.

 

Registration Refused – Name Differs in Application and Foreign Registration

Registration is refused because applicant is not the owner of the mark.  Trademark Act Sections 1 and 44, 15 U.S.C. §§1051 and 1126.  Under 15 U.S.C. §1126, an applicant must be the owner of the foreign registration on the filing date of the United States application.  37 C.F.R. §2.34(a)(3); TMEP §1005.  In re De Luxe, N.V., 990 F.2d 607, 26 USPQ2d 1475 (Fed. Cir. 1993); In re Tong Yang Cement Corp., 19 USPQ2d 1689 (TTAB 1991).  In this case, the foreign certificate specifies an owner other than the applicant, i.e., Koninklijke Emballage Industrie Van Leer N.V.

 

If applicant is the owner of the foreign registration and can prove ownership of the foreign registration by an assignment that was completed before filing in the United States, the §44 basis can remain in the application.  Applicant must submit a certified copy or certification from the foreign trademark office that reflects applicant’s ownership of the foreign registration and the date of the assignment, or evidence that the foreign registration was assigned to applicant before the filing date in the United States.  TMEP §§1005 and 1006.

 

If applicant did not own the foreign registration on or before the filing date, then applicant may substitute a different basis for filing if applicant can satisfy the requirements for the new basis.

 

In this case, applicant may wish to amend the application to assert a 1(b) basis.

 

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

 

Informalities

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

 

Identification of Goods

The identification of goods is unacceptable as indefinite.  The applicant may adopt the following identification, if accurate: 

 

            Metal storage drums, metal fluid storage tanks, tins of metal, metal cylinders for compressed gas or liquid sold empty, casings of metal, metal crates not for pets, and similar metal containers for the storage and transportation of goods; metal closures for containers; replacement parts and fittings in the nature of ________ [specify what the “fittings” are – or delete the wording “and fittings”] for the aforesaid goods, in Class 6;

 

            Containers of kraftpaper and/or cardboard; plastic single-ply or laminated film for wrapping not for commercial or industrial purposes; books about _______ [specify the type or subject-matter] and other printed publications, namely, _______ [specify the type of “publications” e.g. magazines, newsletters, booklets] about _________ [indicate subject-matter], and manuals pertaining to the corporate business about _______ [indicate the subject matter – note:  the goods must be “goods in trade” – see note below]; stationery, in Class 16;

 

            Packing padding materials of plastics for shipping containers; plastic wrappings, films and foils for commercial and industrial packing uses; plastic padding for the inner-walls of shipping containers, in Class 17;

           

            Non-metallic drums, namely, plastic storage drums, in Class 20;

 

            Disposable bulk container liners; sacks or bags for the transportation or storage of materials in bulk, in Class 22. 

 

TMEP §1402.01.

 

Note:  While an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods and/or services that are not within the scope of the goods and/or services recited in the present identification.

 

Note:  For assistance with identifying 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. 

 

Note:  The identification of goods includes “books and other printed publications, manuals pertaining to the corporate business; stationery.”  However, use of a mark on such items is not considered appropriate trademark use if these are merely incidental items used in conducting a business enterprise.  See In re Shareholders Data Corp., 495 F.2d 1360, 181 USPQ 722 (C.C.P.A. 1974).  Only items applicant sells or transports in commerce for use by others are considered “goods in trade.”  15 U.S.C. §§1051, 1052 and 1127; TMEP §1202.06.  Therefore, applicant must amend the identification of goods to delete any items used merely to conduct its business. 

 

Requirements for Combined Applications

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 in commerce under Trademark Act Section 1(b) and/or a foreign registration under Trademark Act Section 44(e):

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01. Note:  The applicant has paid for five (5) classes to date.

 

Certificate of Foreign Registration Required

The application does not include a copy of the foreign registration.  An application filed under Section 44(e) of the Trademark Act must include a true copy, photocopy, certification or certified copy of a foreign registration, or a registered extension of protection of an international registration from the applicant’s country of origin.  15 U.S.C. §1126(e); 37 C.F.R. §2.34(a)(3)(ii); TMEP §§1004 et seq. 

 

The “search strategy” result does not appear to meet the requirement of “a registered extension of protection of an international registration from the applicant’s country of origin.”

 

Applicant’s country of origin must be a party to a convention or treaty relating to trademarks to which the United States is also a party, or must extend reciprocal registration rights to nationals of the United States by law.  See TMEP §§1002.01 and 1004.  If applicant’s country of origin does not issue registrations or certificates of extension of protection, the applicant may submit a copy of the international registration that shows that protection of the international registration has been extended to applicant’s country of origin.  TMEP §1016.

 

Therefore, applicant must submit a copy of the foreign registration in order to satisfy the requirement of Section 44(e).  If the foreign certificate of registration is not written in English, applicant must also provide an English translation signed by the translator.  See TMEP §§1004.01 and 1004.01(b).

 

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

/Gina M. Fink/

Trademark Attorney - Law Office 109

Phone: (571) 272-9275

Law Office 109 Fax: (571) 273-9109

 

 

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.