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. 79162184
MARK: VENUM
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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: VTEC Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1239926
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.
Section 2(d) Refusal– Likelihood of Confusion
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Comparison of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); TMEP §1207.01(b).
In the present case, the dominant feature of the applicant’s mark, VENUM (& Design), is similar to the dominant feature of the registrants’ marks, VENOM, and will lead to consumer confusion. 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). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751.
Comparison of the Goods and/or Services
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).
In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and/or services travel in all normal channels of trade, and are available to the same class of purchasers. Further, the application/registration(s) use(s) broad wording to describe the goods and/or services and this wording is presumed to encompass all goods and/or services of the type described, including those in registrant(s)’s more narrow identification.
Accordingly, because confusion as to source is likely, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.
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, 1026 (Fed. Cir. 1988).
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Applicant must respond to the requirement(s) set forth below.
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.
If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).
Identification of Goods and/or Services Amendment Requirement
The USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and/or services covered by a mark. In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)). Accordingly, the USPTO requires the description of goods and/or services in a U.S. application to be specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).
An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq. For amendments to identifications consisting of class headings, the scope of the identification is limited by both the ordinary meaning of the words in, and the international class of, the heading. See In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1598; TMEP §§1402.06(a), (b), 1402.07(a).
Thus, applicant must amend the class heading(s) to identify specific goods and/or services that fall within (1) the ordinary meaning of the words specified in the class heading(s), and (2) the international classification of the heading(s). See TMEP §§1402.06(a), (b), 1402.07(a).
Also, the identification of goods and/or services contains parentheses. Generally, parentheses and brackets should not be used in identifications. Parenthetical information is permitted in identifications only if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity of the identification, e.g., “obi (Japanese sash).” TMEP §1402.12.
Therefore, applicant must remove the parentheses from the identification of goods and/or services and incorporate the parenthetical information into the description.
Applicant may amend the class heading(s) in the identification to the following, if accurate:
Class 3: Perfumes; perfumery products, namely, {specify goods by common commercial name, e.g., “perfumes”}; toilet water; eau de parfum; essential oils for personal use; cosmetics; make-up products, namely, {specify goods by common commercial name, e.g., “cosmetics”}; hair and body lotions; soaps; dentifrices; deodorants for personal use; tissues impregnated with cosmetic lotions; shower gels; shampoos; beauty creams for the body; shaving products, namely, {specify goods by common commercial name, e.g., “after-shave creams”}; shaving creams; after-shave lotions; after-shave balms; cosmetic preparations for baths, namely, {specify goods by common commercial name, e.g., “bubble bath”}; cosmetic creams; lotions for cosmetic use, namely, {specify goods by common commercial name, e.g., “firming lotions”}; toiletries, namely, {specify goods by common commercial name, e.g., “non-medicated toiletries”}; bleaching preparations and other substances for laundry use, namely, {specify goods by common commercial name, e.g., “bleaching preparations for domestic use”}; cleaning, polishing and scouring preparations; cleaning products, namely, {specify goods by common commercial name, e.g., “cleaning preparations”}; oils for cleaning purposes; preservatives for leather (polishes) {delete parenthetical wording}, namely, {specify goods by common commercial name, e.g., “leather preserving polishes”}
Class 5: Food supplements; dietetic substances, namely, {specify goods by common commercial name, e.g., “dietic foods in the nature of crackers adapted for medical use”}, and vitamins; nutritional supplements for cosmetic use
Class 9: Spectacles; sunglasses; protective goggles, namely, {specify goods by common commercial name, e.g., “safety goggles”}; earphones; protective helmets for combat sports; scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision) {delete parenthetical wording}, life-saving and teaching apparatus and instruments, namely, {specify goods by common commercial name, e.g., “safety goggles”}; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, namely, {specify goods by common commercial name, e.g., “electrical controllers”}; apparatus for recording, transmission or reproduction of sound or images; magnetic recording media, namely, {specify goods by common commercial name, e.g., “blank magnetic tapes for tape recorders”}, sound recording disks, namely, {specify goods by common commercial name, e.g., “sound recorded magnetic tapes featuring music”}; compact disks featuring music, DVDs featuring music videos, and other digital recording media, namely, {specify goods by common commercial name, e.g., “blank digital storage media”}; data processing equipment, computers; software, namely, {specify goods by common commercial name, e.g., “computer software for database management”}
Class 14: Precious metals and their alloys and goods made of these materials or coated therewith not included in other classes, namely, {specify goods by common commercial name, e.g., “jewelry”}; jewelry; jewelry products, namely, {specify goods by common commercial name, e.g., “earrings”}; precious stones; timepieces and chronometric instruments
Class 18: Leather and imitation leather, goods made of these materials not included in other classes, namely, {specify goods by common commercial name, e.g., “leather shopping bags”}; animal skins; luggage in the nature of trunks; suitcases; umbrellas and parasols; walking sticks; umbrella sticks, namely, {specify goods by common commercial name, e.g., “umbrella bases”}; satchels; leatherboard, namely, {specify goods by common commercial name, e.g., “leather boxes”}; traveling trunks; card cases, namely, {specify goods by common commercial name, e.g., “card wallets”} and wallets; document holders {this belongs in Class 16 and, as this is a Madrid application, needs to be deleted}; music cases; bags, namely, {specify goods by common commercial name, e.g., “leather shopping bags”}; backpacks; handbags; shopping bags, namely, {specify goods by common commercial name, e.g., “leather shopping bags”}; wheeled bags; bags for climbers, namely, {specify goods by common commercial name, e.g., “all-purpose carrying bags”}; bags for campers, namely, {specify goods by common commercial name, e.g., “all-purpose carrying bags”}; beach bags; sports bags, excluding football bags; travel bags; bags envelopes, pouches {delete the wording “envelopes, pouches” as this appears to be the bracketed wording in the ID Manual} of leather for packaging; garment bags for travel; travel sets of leatherware, namely, {specify goods by common commercial name, e.g., “travelling bags”}
Class 24: Fabrics and textile goods (except clothing) {delete parenthetical wording}, namely, {specify goods by common commercial name, e.g., “bed throws”}; bed throws; table covers, namely, {specify goods by common commercial name, e.g., “table linen”}; bed blankets; bed covers of paper; bed covers; pillow shams; covers for cushions; bath linen except clothing, namely, {specify goods by common commercial name, e.g., “towels”}; bed linen; household linen; bed clothes, namely, {specify goods by common commercial name, e.g., “bed skirts”}; plastic material substitute for fabrics, namely, {specify goods by common commercial name, e.g., “bed blankets”}; textile materials, namely, {specify goods by common commercial name, e.g., “fabrics for textile use”}; moleskin fabric, namely, {specify goods by common commercial name, e.g., “fabrics for textile use”}; travel rugs (lap robes) {delete parenthetical wording}, namely, {specify goods by common commercial name, e.g., “lap rugs”}; fabrics, namely, {specify goods by common commercial name, e.g., “fabrics for textile use”}; fabrics for textile use; adhesive fabric for application by heat
Class 27: Carpets, rugs, mats and matting, linoleum and other materials, namely, {specify the wording “other materials,” e.g., “carpeting”}, all for covering existing floors; reed mats; vinyl floor coverings; carpet underlay; non-slip mats; gymnastic mats; wall hangings not of textile , namely, {specify goods by common commercial name, e.g., “decorative wall hangings, not of textile” [NOTE: textile wall hangings are in Class 24, not Class 27]}
Class 32: Energy drinks; mineral and aerated waters and other non-alcoholic beverages, namely, {specify goods by common commercial name, e.g., “carbonated beverages”}; beverages based on fruit, namely, {specify goods by common commercial name, e.g., “fruit drinks”}, and fruit juices; syrups and other preparations for making beverages, namely, {specify “other preparations” by common commercial name, e.g., “syrup substitutes for making beverages”}; soda water; beers; isotonic beverages; non-alcoholic malt-based beverages, namely, {specify goods by common commercial name, e.g., “non-alcoholic malt beverage”}; effervescent tablets and effervescent powders for making non-alcoholic cocktails and beverages, namely, {specify goods by common commercial name, e.g., “essences for making non-alcoholic beverages”}
The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification the International Bureau of the World Intellectual Property Organization assigned to the goods and/or services in the corresponding International registration. TMEP §§1401.03(d) and 1904.02(b).
Therefore, any modification to this wording must identify goods and/or services in the classifications specified in the application for these goods and/or services.
Also, an applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.
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.
The description of the mark is accurate but incomplete because it does not describe all the significant aspects of the applied-for mark. Applications for marks not in standard characters must include an accurate and concise description of the entire mark that identifies literal elements as well as any design elements. See 37 C.F.R. §2.37; TMEP §§808 et seq.
Therefore, applicant must provide a more complete description of the applied-for mark. The following is suggested:
The mark consists of the stylized wording "VENUM" under a design of a snake's head.
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 §§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.
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.
/James W. Stein/
Trademark Examining Attorney
Law Office 107
Phone: 571.272.3056
james.stein@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 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.