UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79142516
MARK: OK
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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: OK Corporation
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1192094
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION 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.
In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal 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). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Trademark Act Section 2(d) – Likelihood of Confusion Refusal
THIS REFUSAL APPLIES TO CLASSES 009 and 035 ONLY
Similarity of the Marks
Here, the applicant’s mark, OK plus design, is similar to the registered marks, OK! plus design, OK! WEEKLY plus design, OK!, OK!, OK! USA plus design, because the marks contain the similar term OK.
Although two of the registered marks respectively contain the additional terms WEEKLY and USA, these terms are disclaimed and therefore less significant under a Section 2(d) analysis. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for an applicant’s goods and/or services is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752 ; TMEP §1207.01(b)(viii), (c)(ii).
Next, although the applicant’s mark contains stylized lettering with a design, these aspects of the mark are less significant under a Section 2(d) analysis. For a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods and/or services. Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)). Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Additionally, the applicant’s mark, OK plus design, is similar to the registered the mark O’KAY because the marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Although the applicant’s mark spells the term “okay” with the letters OK whereas the registrant’s mark spells the term with an apostrophe after the letter “o” in “okay,” this difference does not change the commercial impression of the marks. Therefore, the marks are confusingly similar.
Similarity of the Goods and Services
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).
Here, the applicant’s goods in Class 009 are closely related to the goods of the registrant, Odyssey Magazine Publishing Group LLC, because these goods listed include publications and game programs. Please see the identification of goods listed in the instant application and cited registrations.
Moreover, the applicant’s identification of goods is broad and may encompass this registrant’s more specific type and field of publications, namely magazines featuring news of celebrity lifestyle, fashion and clothing, cultural and political events, the performing arts, travel and astrology. With respect to applicant’s and registrant’s goods and/or services, the question of likelihood of confusion is determined based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-70, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Additionally, the applicant’s services in Class 035 are closely related to the services of the registrant, Oasis Intertrade Limited, because the services listed include various retail services featuring consumer goods and food. Please see the identification of services listed in the instant application and cited registration.
Moreover, this registrant’s identification of retail store services is broad and may encompass the registrant’s more specific fields of consumer goods, e.g. woven fabrics, clothing, footwear, bags, bicycles, furniture, tools, hardware, flowers, toys, games, stationery, tobacco, etc.
Absent restrictions in an application and/or registration, the identified goods and/or services are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
Accordingly, because confusion as to source is likely, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.
Applicant should note the following potential additional ground for refusal.
Prior 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 and Services
Therefore, applicant must remove the parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description.
Applicant may change this wording to the following if accurate:
Class 009: “{specify nature of machines and apparatus, e.g. Telecommunication machines and apparatus, namely, telecommunication cables and switches; {specify function of programs, and if field-specific, then specify field, e.g. downloadable computer programs for use in database management; {specify common commercial names for machines, apparatus and parts, e.g. electronic machines, apparatus and their parts, namely, electronic control systems for machines; {specify further nature of goods, e.g. computer game programs for use with home video game machines; electronic circuits and {specify further nature and subject matter or area of use, e.g. computer game software recorded on CD-ROMs for use with hand-held games with liquid crystal displays; {specify subject matter, e.g. downloadable image files containing artwork, text, audio, video, games and Internet web links relating to sporting and cultural activities; {specify subject matter, e.g. recorded video discs and video tapes featuring music; downloadable music files; {specify form and subject matter of publication, e.g. electronic publications, namely, books, magazines and journals featuring computer games and video games”
Class 035: “{specify further the nature of retail and wholesale services, e.g. Retail store services or wholesale store services featuring woven fabrics and beddings; retail store services or wholesale store services featuring clothing; retail store services or wholesale store services featuring footwear other than special footwear for sports; retail store services or wholesale store services featuring bags and pouches; retail store services or wholesale store services featuring foods and beverages; retail store services or wholesale store services featuring bicycles; retail store services or wholesale store services featuring furniture; retail store services or wholesale store services featuring electrical machinery and apparatuses; retail store services or wholesale store services featuring bladed or pointed hand tools, hand tools, hardware; retail store services or wholesale store services featuring kitchen equipment, cleaning tools and washing utensils; retail store services or wholesale store services featuring pharmaceutical, veterinary and sanitary preparations and medical supplies; retail store services or wholesale store services featuring cosmetics, toiletries, dentifrices, soaps and detergents; retail store services or wholesale store services featuring flowers and trees; retail store services or wholesale store services featuring fuel; retail store services or wholesale store services featuring paper and stationery; retail store services or wholesale store services featuring sports goods; retail store services or wholesale store services featuring toys, dolls, game machines and game apparatus; retail store services or wholesale store services featuring tobaccos and smokers' articles”
Class 042: “Computer software design, computer programming, or maintenance of computer software; rental of computers; {specify type, field and function of computer programs, e.g. providing online non-downloadable computer programs for use in database management”
In addition, in a Section 66(a) application, 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), 1402.01(c). 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); TMEP §§1401.03(d), 1402.01(c).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
Color Claim and Mark Description
Based on the foregoing requirements for a complete color claim, applicant must provide a color claim that references all of the colors appearing in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.
The following color claim is suggested: “The colors orange, red and white are claimed as a feature of the mark.”
Alternatively, if white is not claimed as a feature of the mark, then the applicant must amend the mark description. The following mark description is suggested: “The mark consists of a rectangle and letters "O" and "K" appearing in the rectangle; the triangular part of the rectangle appearing on the right side of the letter "K" and the inside of the letter "O" is red; the remainder of the rectangle is orange. The color white appears as transparent areas in the letters “O” and “K” in the mark but is not claimed as a feature of the mark.”
Foreign Attorney May Not Represent Applicant (Advisory)
(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(a), (e), 2.62(b), 11.1, 11.14(a), (c); TMEP §§602, 712.01.
Foreign attorneys, other than authorized Canadian attorneys, are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §§2.17(e), 11.14(c), (e); TMEP §602.03-.03(c).
Unless the identified foreign attorney can establish that he or she is authorized under 37 C.F.R. §11.14, then this attorney is not authorized to practice before the USPTO in trademark matters and may not sign responses or otherwise represent applicant in this application. See 37 C.F.R. §2.62(b); TMEP §602.03(e). Any power of attorney to this foreign attorney is void ab initio. TMEP §602.03(e).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those 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. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).
In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.
DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
/Natalie Polzer/
Trademark Examining Attorney
Law Office 108
Phone: (571) 272-4103
natalie.polzer@uspto.gov (not for formal responses)
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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.