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  77/098289

 

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

 

2(d) Likelihood of Confusion

 

THIS REFUSAL APPLIES TO CLASS 041 ONLY.

 

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 services, so resembles the mark in U.S. Registration No. 2679297 as to be likely to cause confusion, or to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the attached registration.

 

Taking into account the relevant DuPont 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. DuPont 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.

 

The marks are compared for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b).

 

In this case, the applicant’s mark ARIEL is identical in sound and appearance to the mark ARIEL in the above-cited registration. 

 

Likelihood of confusion is determined on the basis of the goods or services 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 services is very broad, it is presumed that the application encompasses all services 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).

 

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). 

 

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.

 

Refusal Pertains to One of More than Two Classes

 

The stated refusal refers to Class 041 only and does not bar registration in the other classes.

 

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

 

(1)               deleting the class to which the refusal pertains;

 

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

 

(3)               filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may be published for opposition in the classes to which the refusal does not pertain (See 37 C.F.R. §2.87 and TMEP §§l 110.05 and 1403.03 regarding the requirements for filing a request to divide); or

 

(4)               changing the basis, if appropriate (the basis may not be changed for applications filed under Trademark Act §66(a)).

 

Prior Pending Application

 

THIS POTENTIAL REFUSAL APPLIES TO THE CLASS 041 SERVICES ONLY.

 

The examining attorney also attaches information regarding pending Application Serial No. 77/019900.  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. 

 

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.

Identification of Goods and Services

 

The wording “Articles made from leather and imitations of leather, and not included in other classes” and “bags” in the Class 018 identification of goods needs clarification because it is overly broad, and the particular types of goods must be specified.  Also, these goods can be classified in more than one class.

 

The wording “wind chimes” in the Class 021 identification of goods is misclassified.  These goods are properly classified in Class 020.  Also, the wording “Housewares; household containers … glassware … coasters; removable insulators for drink cans and bottles … insulated containers; trays … figurines” in the Class 021 identification needs clarification because it is overly broad, and the particular types of goods must be specified.  Also, some of these goods can be classified in more than one class.

 

The wording “Confectionery” and “preparations made from cereals; cereal bars” in the Class 030 identification needs clarification because it is overly broad, and the particular types of goods must be specified.

The applicant must amend each identification of goods to specify the common commercial or generic name for the goods.  If there is no common commercial or generic name for the product, then applicant must describe the product and intended consumer as well as its main purpose and intended uses.  TMEP §1402.01.

Last, the wording “Entertainment and education services” in the Class 041 identification of services needs clarification because it is too broad, and the particular type of services must be specified.  TMEP §§1402.01 and 1402.03.  The applicant must amend the recitation of services to specify the common commercial or generic name for the services.  If there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s).  TMEP §1402.01.

 

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

 

“bags, namely, paper bags; coasters made of paper, in International Class 016.”

 

“Articles made from leather and imitations of leather, and not included in other classes, namely, [insert type of “bags,” e.g., book bags]; tote bags; purses; handbags; wallets; umbrellas; diaper bags, in International Class 018.”

 

“wind chimes, in International Class 020.”

 

“Housewares, namely, [insert type of “household containers,” e.g., household containers for foods]; dinnerware; glassware, namely, beverageware; coasters, namely, [insert type of goods, e.g., plastic coasters]; [insert type of “removable insulators for drink cans and bottles,” e.g., removable thermal insulated wrap for drink cans and bottles to keep the contents cold or hot]; lunch kits consisting of lunch boxes and [insert type of “insulated containers,” e.g., heat-insulated vessels]; trays, namely, [insert type of goods, e.g., serving trays]; hair brushes and hair combs; toothbrushes; figurines, namely, [insert type of goods, e.g., ceramic figurines]; plastic cups; cookie jars; paper cups; paper plates; wastepaper baskets, in International Class 021.”

 

“Confectionery, namely, [insert type of goods, e.g., candy]; chewing gum; breakfast cereals; preparations made from cereals, namely, [insert type of “cereal bars,” e.g., ready to eat, cereal-derived food bars]; bread; muffins; muffin bars; pastry; waffles; pancakes; cookies; crackers; biscuits; popcorn; corn chips; pretzels; puddings; coffee; tea, in International Class 030.”

 

“Entertainment and education services, namely, [insert type of services, e.g., live performances by a musical band], in International Class 041.”

 

TMEP §1402.01.

 

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.

 

Please note that, 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 or services that are not within the scope of the goods and services recited in the present identification.

Additional Classes

 

The application identifies goods and services that are classified in more than four (4) international classes.  Therefore, the applicant must either:  (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es).  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01. 

 

If applicant submits the outstanding fees with a paper response, then applicant must submit $375 per class to cover the fees for the remaining class(es).  However, if applicant submits the fees in a response filed via the Trademark Electronic Application System (TEAS), then applicant must submit $325 per class to cover the fees for the remaining class(es).  37 C.F.R. §§2.6 and 2.86(a)(2); TMEP §§810, 1401.04, 1401.04(b) and 1403.01.

Response Guidelines for Applicant

 

Please note, 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.

 

When responding to this Office action, applicant must make sure to respond to each refusal and requirement raised.  If there is a refusal to register the proposed mark, then 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.  If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record.  Applicant must also sign and date its response.

 

 

 

/Andrew Rhim/

Examining Attorney

Law Office 101

phone (571) 272-9711

fax (571) 273-9101

 

 

 

 

NOTICE OF NEW PROCEDURE FOR E-MAILED OFFICE ACTIONS:  In late spring 2007, for any applicant who authorizes e-mail communication with the USPTO, the USPTO will no longer directly e-mail the actual Office action to the applicant.  Instead, upon issuance of an Office action, the USPTO will e-mail the applicant a notice with a link/web address to access the Office action using Trademark Document Retrieval (TDR), which is located on the USPTO website at http://portal.gov.uspto.report/external/portal/tow.  The Office action will not be attached to the e-mail notice.  Upon receipt of the notice, the applicant can then view and print the actual Office action and any evidentiary attachments using the provided link/web address.  TDR is available 24 hours a day, seven days a week, including holidays and weekends.  This new process is intended to eliminate problems associated with e-mailed Office actions that contain numerous attachments.

 

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.