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. 79142626
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CORRESPONDENT ADDRESS: Attorneys at Law Borenius Ltd. |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Sulake Corporation Oy
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 0869311
STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID PARTIAL ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL PARTIAL 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 partial refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
This is a PROVISIONAL PARTIAL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application that applies to only the following goods and/or services in the application: “computer…software; parts and fittings for all the aforesaid goods,” “hand held unit for playing electronic games and video games and parts and fittings for all the aforesaid goods,” “salt, mustard; vinegar, sauces; spices,” “information regarding all of the aforesaid services,” “mobile media and entertainment services in the nature of electronic transmission of entertainment media content; mobile media amid entertainment services in the nature of content preparations; providing of entertainment advice, consultancy and information regarding all of the aforesaid services,” and “provision of technical advice, consultancy and information regarding all of the aforesaid services.” See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional partial refusal.
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Summary of Issues Applicant Must Address
Refusal - Section 2(d) – Likelihood of Confusion
The stated refusal refers to the following goods and/or services and does not bar registration for the other goods and/or services: “salt, mustard; vinegar, sauces; spices.”
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4028791 (HABO for “hot sauce”). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
A. General Principles in Determining Likelihood of Confusion:
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.
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.
B. Similarity of the Marks:
In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
In the present matter, 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).
C. Relatedness of the Goods and/or Services:
The applicant’s goods and/or services (“salt, mustard; vinegar, sauces; spices”) are related to the registrant’s goods and/or services (“hot sauce”) because both include sauces, and the applicant’s salt, mustard, vinegar and spices are likely to common from the same source as registrant’s hot sauce.
Attached are websites from a search a search of the Internet via the search engine Google® showing that applicant’s goods and registrant’s goods are the type of goods sold together by the same company and encountered by the same classes of purchasers. As a result, consumers who encounter these goods under very similar marks are likely to mistakenly believe that the goods come from a common origin or are somehow connected.
D. Conclusion:
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).
Since the marks are similar and the goods and/or services are related, there is a likelihood of confusion as to the source of applicant’s goods and/or services. Therefore, applicant’s mark is not entitled to registration.
E. Response Guidelines:
Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal. In addition, applicant may respond by doing one of the following:
(1) Deleting the goods to which the refusal pertains;
(2) Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for the goods and/or services identified in the refusal, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
If applicant chooses to respond to the foregoing refusal(s) to register, then applicant must also respond to the following requirement(s).
Requirement - Identification of Goods and/or Services
The identification of goods and/or services contains indefinite language and must be clarified. See TMEP §1402.01. See the proposed identification below for further details.
Applicant may adopt the following identification, if accurate. Please note that the wording subject to this requirement and the suggested changes made by the trademark examining attorney appear in bold. Further, the wording contained in brackets and/or italicized is merely for guidance in responding to this requirement, and should not be included in applicant’s amended identification.
Data processing equipment, namely, computer hardware and computers; video game machines for use with televisions; computer communications software for connecting computer network users; computer software to allow users to perform electronic business transactions via a global computer network; computer screen saver software; computer software for wireless content delivery; interactive video games of virtual reality comprised of computer hardware and software; computer software enabling users of communication devices to simultaneously access databases and global computer networks; computer game and video game software; virtual reality game software; computer game software enabling users to play games with mobile phones; computer game software for communication devices; electronic game software for handled and wireless electronic devices; parts and fittings {specify the actual aforesaid goods, e.g., for computer hardware, and computer software}, namely, {indicate the common commercial name of the parts and fittings included in Class 009} (Class 009)
Printed matter and publications relating to computer games and entertainment, namely, books, magazines, newspapers, instructional and teaching material, manuals, newsletters, newssheets; photographs; stationery; writing and drawing implements, namely ink pens, pencils and markers; posters; postcards; trading cards; notebooks; children's activity books, children's storybooks, comic books, colouring books, albums for photographs, coins and stamps, diaries, calendars; stickers, wrapping paper; temporary tattoos; paper party decorations; paper napkins, paper tablecloths (Class 016)
Clothing and headgear, namely, shirts, socks, suits, jackets, coats, headbands, pants, shorts, hats, caps, visors; footwear (Class 025)
Games and playthings, namely, puzzles, toy figures; arcade games, card games, dice games, party games, role-playing games, trading card games; board games; hand held unit for playing electronic games and video games; parts and fittings {specify the actual aforesaid goods, e.g., for games and playthings}, namely, {indicate the common commercial name of the parts and fittings included in Class 028} (Class 028)
Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour; processed cereals, breakfast cereal, cereal based snack food; bread, bread sticks and bread crumbs; pastries and confectionery, namely, candy, cookies, fruit jellies, biscuits, cakes, chocolate; ice cream; ice cream drinks; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces; spices; ice (Class 30)
Mineral and aerated waters and other non-alcoholic drinks, namely, lemonade, soft drinks, soda pops and water; fruit drinks and fruit juices (Class 032)
Telecommunications access services; providing multiple use access to global computer information networks for the transfer and dissemination of a wide range of information pertaining to entertainment, games and educational applications; providing on-line chat rooms, electronic bulletin boards and discussion forums for transmission of messages among users in the field of general interest; electronic, electric and digital transmission of data including mobile media services in the nature of electronic transmission of entertainment media content; radio and television broadcasting; video broadcasting; electronic mail services; rental of access time to databases and websites; provision of telecommunications advice, consultancy and information regarding {specify the actual aforesaid services, e.g., telecommunications, communications access, data transmission, and broadcasting services} (Class 038)
Entertainment services, namely, providing on-line computer games, providing a web site featuring musical videos, related film clips, photographs, and other entertainment-based multimedia materials and information, providing information on-line relating to computer games and computer enhancements for games; entertainment services in the nature of development, creation, production and post-production services of multimedia entertainment content; multimedia entertainment software production services; entertainment in the nature of television series in the field of cartoons, comedy and music; production of television programmes; production of television and radio programmes; providing of entertainment advice, consultancy and information regarding {specify the actual aforesaid services, e.g., online games, online entertainment content, software production, television programs, and television and radio program production} (Class 041)
Design and development of computer hardware and software for others; computer services, namely, creating and maintaining websites for others; hosting websites for others; licensing of industrial property, namely licensing of intellectual property; provision of technical advice, consultancy and information regarding {specify the actual aforesaid services, e.g., design and development of computer hardware and software, creating and maintaining websites, and hosting websites} (Class 042)
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.
NOTICE: Although identifications of goods and/or services may be amended 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., 1402.07. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.
Further, 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).
If applicant chooses to respond to the foregoing refusal(s)/requirements, then applicant should note the following advisory(ies).
Advisory – Partial Abandonment
If applicant does not respond to this Office action within the six-month period for response, the following goods and/or services will be deleted from the application: “computer…software; parts and fittings for all the aforesaid goods,” “hand held unit for playing electronic games and video games and parts and fittings for all the aforesaid goods,” “salt, mustard; vinegar, sauces; spices,” “information regarding all of the aforesaid services,” “mobile media and entertainment services in the nature of electronic transmission of entertainment media content; mobile media amid entertainment services in the nature of content preparations; providing of entertainment advice, consultancy and information regarding all of the aforesaid services,” and “provision of technical advice, consultancy and information regarding all of the aforesaid services.” The application will then proceed with the remaining goods and/or services. See 37 C.F.R. §2.65(a); TMEP §718.02(a).
Assistance
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
Deirdre G. Robertson
/Deirdre G Robertson/
Trademark Examining Attorney
Law Office 111
Phone No. (571) 272-8806
deirdre.robertson@uspto.gov
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL PARTIAL 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.
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.
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.