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  78/652957

 

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

 

Refusal Under Trademark Act §2(d) – Likelihood of Confusion

 

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2234484.  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 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.

 

In this case, registrant’s mark is XLR8 for “fluid replacement and energy drink concentrate,” while applicant’s mark is XLR8 for “energy chews.”  The two marks are identical in appearance, have the same sound (“accelerate”) when read aloud, and convey the same meaning in relation to their respective goods.  In addition, registrant’s goods are related to applicant’s goods because a range of items for boosting energy is often provided by the same source, e.g., Gatorade, PowerBar, Clif Bar, etc.  See the attached evidence.  A consumer is therefore likely to believe that registrant’s goods and applicant’s goods originate from the same source.  Because the marks themselves are identical and the goods are closely linked in commerce, applicant’s mark must be refused under §2(d).

 

Prior Pending Application

 

Information regarding pending Application Serial No. 78592843 is enclosed.  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.  Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.

 

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.

 

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

 

Classification and Identification of Goods

 

The current wording used to describe the goods needs clarification because it may identify products in more than one class.  Specifically, “energy chews” may refer to a type of candy and/or to a type of nutritional supplement. Applicant may adopt the following classification and identification of goods, if accurate:

 

Class 5:      Nutritional supplements, namely, energy chews

 

Class 30:       Candy, namely, energy chews

 

TMEP §1402.01.  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.

 

Please note that, while the identification of goods may be amended to clarify or limit the goods, adding to the goods or broadening the scope of the goods 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/or services that are not within the scope of the goods set forth in the present identification.

 

If applicant adopts the suggested amendments, then applicant must prosecute this application as a combined, or “multiple-class,” application.

 

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):

 

(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 (current fee information should be confirmed at http://www.uspto.gov).  

 

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

 

Advisory: Description of Mark

 

Applicant’s description of the mark will not be printed on any registration that may issue from this application.  TMEP §808.03.  The description is unnecessary because the mark is composed of easily recognized letters and figurative elements.  TMEP §§808.01(a) and 808.01(b). 

 

Questions

 

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.

 

 

/Rebecca Miles/

Trademark Attorney

Law Office 102

Phone (571) 272-8845

Fax (571) 273-9102

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• 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 in your response.

 

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.