UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 79115518
MARK: TABI
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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: TABI Pty Ltd
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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INTERNATIONAL REGISTRATION NO. 1123004
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION ABOVE, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS REFUSAL WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
The “Mailing Date” appearing on the WIPO cover letter may also be found through the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please enter the U.S. Application Serial Number for this application and select “Documents.” The “Mailing Date” is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the 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.
(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 United States 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/trademarks/teas/index.jsp.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS SPECIFIED BELOW.
The examining attorney respectfully advises applicant that this Office Action contains the following refusal/requirements summarized immediately below and further explained within the body of this Office Action.
SUMMARY OF ISSUES that applicant must address:
Applicant must respond to the refusal/requirements set forth below.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Legal Standard
Analysis
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.
Comparison Of The Marks
The marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding of likelihood of confusion. RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB 1975); see TMEP §1207.01(b)(iv).
In the present case, applicant’s mark consists of the literal element “TABI”. The cited registration mark, TABBY in U.S. Registration No. 4056358, consists of the same dominant sounds and dominant first syllable (“TAB” + [ee sound]) as appears in the applicant’s mark.
Consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).
Consequently, both marks create a similar commercial impression.
Comparison Of The Goods
In the present case, applicant’s mark TABI is for use on or in connection with “Devices for use with computers, tablet computers, smartphones, e-readers, hand-held and/or mobile electronic digital devices, data input devices, devices with haptic feedback or programmable friction, displays, public access display apparatuses, monitors, televisions, telecommunications apparatuses belonging to this class, audio apparatuses, wireless networking apparatuses, cloud-sync apparatuses; enclosures or mounts for computer memory, microprocessors or other computer hardware; aesthetic devices, docks, accessories, clamps, hubs, magnetic holders, lap stands, desk stands, wrist supports, torso supports for any of the above ” in Class 9.
TABBY in U.S. Registration No. 4056358, is for use on or in connection with “Arm rests for use with computers; Carrying cases for electronic equipment, namely, tablet computers; Carrying cases for mobile computers; Computer bags; Wrist rests for use with computers” in Class 9.
Applicant’s and registrant’s goods are both for use in or in connection with the mobile electronics accessories industry. Consequently, applicant’s and registrant’s goods would typically be available and marketed to consumers via the same trade channels.
Where the goods of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
Any goods or services in the registrant’s normal fields of expansion should be considered when determining whether the registrant’s goods and/or services are related to the applicant’s goods and/or services. TMEP §1207.01(a)(v); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581 1584 (TTAB 2007). Evidence that third parties offer the goods and/or services of both the registrant and applicant suggest that it is likely that the registrant would expand their business to include applicant’s goods and/or services. In that event, customers are likely to believe the goods and/or services at issue come from or, are in some way connected with, the same source. In re 1st USA Realty Prof’ls, 84 USPQ2d at 1584 n.4; see TMEP §1207.01(a)(v).
A determination of whether there is a likelihood of confusion is made solely on the basis of the goods and/or services identified in the application and registration, without limitations or restrictions that are not reflected therein. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); TMEP §1207.01(a)(iii). If the cited registration describes the goods and/or services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the registration encompasses all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); TMEP §1207.01(a)(iii).
Conclusion
Accordingly, the applicant’s proposed mark, TABI, is refused for likelihood of confusion under Trademark Act Section 2(d).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
Applicant should note the following potential additional ground for refusal.
SEARCH OF OFFICE’S DATABASE OF MARKS
Prior-Filed Pending Applications
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant must respond to the requirements set forth below.
IDENTIFICATION OF GOODS
The identification of goods is unacceptable because some of the goods are indefinite or overly broad and require further clarification. TMEP §1402.11. Applicant must amend the 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 goods, then applicant must describe the product and intended consumer as well as its main purpose and intended uses. TMEP §1402.01.
Portions of the wording in the identification of goods and/or services are indefinite and must be clarified because of the reasons noted below. See TMEP §§1402.01, 1402.03.
In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another. 37 C.F.R. §2.85(d); see TMEP §§1402.07(a), 1904.02(c).
An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Generally, the terminology “and/or” and “or” is not sufficiently explicit language in identifications because it is not clear whether applicant is using the mark, or intends to use the mark, on all the identified goods or services. See TMEP §1402.03(a).
For example, “modems and/or monitors” could be read to mean “modems or monitors” and thus it is unclear which goods applicant intends to identify. Applicant could amend the identification to “modems” alone, or “monitors” alone, or “modems and monitors” if applicable. Therefore, applicant should replace “and/or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” deleted and the goods or services specified using definite and unambiguous language.
Descriptions of goods and services should use the common, ordinary name for the goods and/or services. TMEP §1402.01. If there is no common, ordinary name for the goods and/or services, applicant should describe the goods and/or services using wording that would be generally understood by the average person. See Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); TMEP §1402.01.
The applicant’s Identification of Goods includes “devices with haptic feedback or programmable friction.”
An in depth knowledge of the relevant field should not be necessary for understanding a description of the goods and/or services. TMEP §1402.01. “[T]echnical, high-sounding verbiage” should be avoided. Cal. Spray-Chem., 102 USPQ at 322.
Some of the goods/services, without clarification, may be classified in different international classes. However, applicant must note that the international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. TMEP §§1401.03(d), 1401.04 and 1904.02(b). Therefore, please be advised that amendments to the goods/services below must stay within the originally listed class.
Applicant may amend the identification to list only those items that are within the scope of the goods set forth in the application or within the scope of a previously accepted amendment to the identification. See 37 C.F.R. §2.71(a); TMEP §§1402.06 et seq., 1402.07.
For the applicant’s convenience, the Examining Attorney has highlighted suggested amendments and problem areas in bold type below.
Applicant may adopt the following identification, if accurate:
Class 9: Devices, namely, {applicant must specify the goods contemplated in Class 9, for example, fitted plastic films known as skins for covering and providing a scratch proof barrier or protection for
electronic devices} for use with computers, tablet computers, smartphones, e-readers, hand-held and/or and mobile electronic digital devices, data
input devices, namely, {applicant must specify the goods contemplated in Class 9}, devices with haptic feedback or programmable friction, namely, {applicant must
specify the goods contemplated in Class 9, and applicant should describe the goods using wording that would be generally understood by the average person}, displays, namely,
{applicant must specify the goods contemplated in Class 9}, public access display apparatuses, namely, {applicant must specify the goods contemplated in Class 9},
monitors, namely, {applicant must specify the goods contemplated in Class 9, for example, computer monitors, or for example, digital signage monitors}, televisions,
telecommunications apparatuses, namely, {applicant must specify the goods contemplated in Class 9} belonging to this class, audio apparatuses, namely, {applicant must specify the goods contemplated in Class 9}, wireless networking apparatuses, namely, {applicant must specify the goods contemplated in Class 9,
for example, broadband wireless equipment, namely, telecommunications base station equipment for cellular and fixed networking and communications applications}, cloud-sync apparatuses, namely, {applicant must specify the goods contemplated in Class 9}; enclosures or mounts for computer memory, microprocessors or other computer
hardware, namely, {applicant must specify the goods contemplated in Class 9}; aesthetic devices, namely, {applicant must specify the goods contemplated in Class
9}, docks, namely, {applicant must specify the goods contemplated in Class 9}, and accessories, namely, {applicant must specify the
goods contemplated in Class 9}, clamps, namely, {applicant must specify the goods contemplated in Class 9}, hubs, namely, {applicant must specify the goods
contemplated in Class 9}, magnetic holders, namely, {applicant must specify the goods contemplated in Class 9}, lap stands, namely, {applicant must specify
the goods contemplated in Class 9}, desk stands, namely, {applicant must specify the goods contemplated in Class 9}, wrist supports, namely, {applicant must
specify the goods contemplated in Class 9, for example, wrist supports for computer mouse users}, torso supports, namely, {applicant must specify the goods contemplated in Class
9} for all of aforesaid goods
Scope Advisory
An applicant may amend an identification of goods and/or services only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq. In addition, in an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another. 37 C.F.R. §2.85(d); see TMEP §§1402.07(a), 1904.02(c).
Assistance Advisory
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. See TMEP §1402.04.
EXPLANATION OF MARK’S SIGNIFICANCE REQUIRED
Further, applicant must provide additional information about this wording to enable proper examination of the application. Specifically, applicant must respond to the following questions:
Applicant must also explain whether “TABI” has any meaning in a foreign language. See 37 C.F.R. §2.61(b); TMEP §814.
If the wording has no English meaning in a foreign language, then the applicant should submit the following statement: The wording “TABI” has no meaning in foreign language.
If the wording has meaning in a foreign language,
Applicant must submit an English translation of the mark. 37 C.F.R. §2.32(a)(9); TMEP §809. The following translation statement is suggested: “The English translation of TABI is ___________.” See TMEP §809.03.
Failure to respond to this request for information can be grounds for refusing registration. See In re DTI P’ship LLP, 67 USPQ2d 1699, 1701 (TTAB 2003); TMEP §814.
RESPONSE
Because of the legal technicalities involved in this application, applicant may wish to hire an attorney specializing in trademark or intellectual property law. For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help at http://www.abanet.org/legalservices/findlegalhelp/home.cfm. The USPTO cannot aid in the selection of an attorney. 37 C.F.R. §2.11.
Please note that 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.
The only attorneys who may 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), 11.1, 11.5(b)(2), 11.14(a), (c); TMEP §602.
To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/teas/index.html. If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov.
/Ronald E. DelGizzi/
Ronald E. DelGizzi
Trademark Examining Attorney
Law Office 107
(571) 272-2754
ronald.delgizzi@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.