UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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APPLICATION SERIAL NO. 79101131
MARK: STAMPEDE
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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: Tube Plastics Limited
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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.
INTERNATIONAL REGISTRATION NO. 1086983
This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:
Applicant may respond directly to this provisional refusal Office action if applicant is not represented by an authorized attorney. See 37 C.F.R. §2.193(e)(2)(ii). Otherwise, applicant’s authorized attorney must respond on applicant’s behalf. See 37 C.F.R. §2.193(e)(2)(i). However, the only attorneys who are authorized to sign responses and practice before the USPTO in trademark matters are as follows:
(1) Attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States; and
(2) Canadian agents/attorneys who represent applicants located in Canada and (a) are registered with the USPTO and in good standing as patent agents or (b) have been granted reciprocal recognition by the USPTO.
See 37 C.F.R. §§2.17(e), 2.62(b), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §§602, 712.03.
Foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO. See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(b). That is, foreign attorneys may not file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal, among other things. See 37 C.F.R. §11.5(b)(2); TMEP §§602.03(c), 608.01. If applicant is represented by such a foreign attorney, applicant must respond directly to this provisional refusal Office action. See 37 C.F.R. §2.193(e)(2)(ii).
DESIGNATION OF DOMESTIC REPRESENTATIVE:
The USPTO encourages applicants who do not reside in the U.S. to designate a domestic representative upon whom notices or process may be served. 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2); see TMEP §610. Such designations may be filed online at http://www.gov.uspto.report/teas/index.html.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
SECTION 2(d) REFUSAL: LIKELIHOOD OF CONFUSION
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
The Marks at Issue
The applicant seeks to register STAMPEDE in connection with toys, games and playthings for pre-school children; play mats, multiple activity toys, board games.
The registered marks are:
DIXIE STAMPEDE (U.S. Registration No. 3970485) for toys, namely, stuffed toys, toy animals and toy guns
MAGNA STAMPEDE (U.S. Registration No. 3006311) for toy action figures, toy vehicles and toy robots convertible into other visual toy forms and accessories therefor.
Comparison of the Marks
The shared element in these marks, the word STAMPEDE, is dominant because the other wording in the marks (MAGNA and DIXIE) modify STAMPEDE. The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.
Comparison of the Goods/Services
In this case, the identification set forth in the cited registration uses broad wording to describe registrant’s goods and/or services and does not contain any limitations as to nature, type, channels of trade or classes of purchasers. Therefore, it is presumed that the registration encompasses all goods and/or services of the type described, including those in applicant’s more specific identification, that the goods and/or services move in all normal channels of trade, and that they are available to all potential customers. See Citigroup Inc. v. Capital City Bank Grp., Inc., ___ F.3d ___, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); TMEP §1207.01(a)(iii).
The applicant’s identification of goods listed as “toys, games and playthings for preschool children” and “play mats” are broad enough to encompass the goods of the registrants. If the play mats are for use with toy vehicles, then they would be considered an accessory for toy vehicles. Toys, games and playthings are broad enough to encompass stuffed toys, toy action figures and toy convertible action figures and robots, which may all be used by pre-school children.
Therefore, registration is refused under Section 2(d) of the Trademark Act.
ADDITIONAL REQUIREMENTS
Applicant must respond to the requirement(s) set forth below.
IDENTIFICATION OF GOODS
The applicant must state the nature of the toys, games and playthings for preschool children, e.g., stuffed toy animals or action figures. The applicant must also clarify the intended use for the play mats, whether they are for toy vehicles or contain baby activity toys. The applicant may amend to any or all of the following, as may be accurate. Suggested amendments appear in bold, while wording that requires further clarification appears in italics. The correct classification for the goods/services also appears below.
Class 28: toys, games and playthings for pre-school children, namely, (list each item, e.g., children’s dress-up accessories); play mats containing infant toys; children’s and babies’ multiple activity toys; board games
Guidelines for Amending the Identification of Goods or Services
The applicant is advised that the above suggestions may not be a complete listing of acceptable specifications available to the applicant, but are instead provided only as suggestions. It is the applicant's duty to properly identify the goods and services. TMEP Section 1402.01(e).
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. See TMEP §1402.04.
Please also note that the applicant may not use the indefinite wording “and/or,” “or,” or “etc.” in its identification of goods/services. The applicant must use the more definite word “and” when listing more than one item. The applicant may not use parentheticals in its description of goods/services. The examining attorney may have used them above merely to indicate wording that requires further amendment.
NOTE: APPLICABLE LEGAL AUTHORITIES
15 U.S.C. §§1051 et seq.; 37 C.F.R. pts. 2, 3, 6, 7, 10, 11; see TMEP intro., §§101, 107, 110.
Official USPTO letters and notices sent to applicants generally refer to one or more of these legal resources. Both the Trademark Act and the Trademark Rules of Practice can be viewed online at the Trademarks’ Home Page at http://www.gov.uspto.report/trademarks/index.jsp by clicking on “Laws & Regulations” on the left side of the screen. The TMEP is also available via the Home Page by clicking on “Manuals, Guides, Official Gazette” on the left side of the screen. Trademark Trial and Appeal Board decisions and the TBMP can be found at their website located at http://www.gov.uspto.report/trademarks/process/appeal/index.jsp.
The acronym “TMEP” used in official USPTO letters and notices refers to the USPTO’s Trademark Manual of Examining Procedure (7th ed. Oct. 2010), a manual written by USPTO staff that explains the laws and procedures governing the trademark application, registration, and post registration processes. The TMEP can be viewed online at the Trademarks’ Home Page at http://www.gov.uspto.report/trademarks/index.jsp by clicking on “Manuals, Guides, Official Gazette” on the left side of the screen.
The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark/service mark applications and registrations. To access the TARR database, applicant will need to provide an application serial number or registration number. The TARR database is available 24 hours a day, 7 days a week.
/Elissa Garber Kon/
Examining Attorney, Law Office 106
Phone: (571) 272-9181
Fax: (571) 273-9106
Email: elissagarber.kon@uspto.gov
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.