UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 79168816
MARK: SUPERCELL
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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: Supercell Oy
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1255776
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.
SUMMARY OF ISSUES:
· Refusal under Section 2(d) – Likelihood of Confusion (Partial)
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
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.
Facts
Applicant’s mark is SUPERCELL for, in relevant part, “toys, games and playthings; wooden toys, toys made of plastics” in International Class 28.
Registrant’s mark is SUPERCELL for “baseball bats * and softball bats” in International Class 28.
Similarity of the Marks
In the present case, applicant’s mark is SUPERCELL and registrant’s mark is SUPERCELL. Thus, the word portion of the marks is identical in terms of appearance and sound. In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective goods.
Therefore, the marks are confusingly similar.
Relatedness of Goods
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
Absent restrictions in an application and/or registration, the identified goods 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 has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods travel in all normal channels of trade, and are available to the same class of purchasers. Further, the application uses broad wording, in relevant part, namely, “toys, games and playthings; wooden toys, toys made of plastics,” to describe the goods and this wording is presumed to encompass all goods of the type described, including those in registrant’s more narrow identification.
Accordingly, the goods are related for likelihood of confusion purposes.
Conclusion
In conclusion, the word portion of the two marks is identical and the goods are legally identical, in relevant part. Therefore, a likelihood of confusion as to the source of the goods exists, and registration must be refused under Section 2(d) of the Lanham Act.
Applicant must respond to the requirements set forth below.
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
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).
Therefore, any modification to this wording must identify goods in the classification specified in the application for these goods.
Applicant may adopt the following identification, if accurate (please note that suggested amendments are in bold italics and suggested deletions are in strikethrough):
International Class 6
“Chains and __{indicate specific type of rings, e.g., sealing, gasket, key} rings of common metal; statuettes of common metal; non-electric locks of metal; trophies of common metal; nameplates of common metal; rings and chains of common metal for keys.”
International Class 9
“Bags, cases and sleeves specially adapted for storing and carrying telephones, computers, headphones, and cameras; covers for mobile phones, portable computers and tablet computers; headphones; downloadable electronic publications in the nature of __{indicate nature of publication, e.g., books, magazines, articles, etc.} in the field of __{indicate field or subject matter}; decorative magnets; portable flash memory devices, namely, __{specify type, e.g., blank flash memory cards}; belts for carrying electronic apparatus and straps for electronic apparatus, namely, __{specify type of apparatus, e.g., camera straps, mobile phone straps, etc.}; electric power supplies.”
International Class 16
“Paper and cardboard; comic books; newspapers, photographs; magazines, books, printed
periodicals, and newsletters in the field of __{indicate field or subject matter}; notebooks; and brochures in the field of __{indicate field or subject
matter}; computer game instruction manuals; writing paper and envelopes; calendars; bookmarks; notebook, calendar and __{indicate type of card, e.g., note, greeting, etc.}
card covers; packing paper, wrapping paper and packaging materials, namely, __{specify type, e.g., paper bags for packaging};
cardboard boxes; party decorations made of paper; pens, erasers; posters, paper banners; figures made of paper; paper bags; sticker albums, stickers; __{indicate type of card, e.g.,
note, greeting, etc.} cards, post cards, collectable trading cards, trading cards; printed paper
signs.”
International Class 18
“Bags, namely, __{specify type, e.g., school bags, beach bags, etc.}; all purpose sport bags; carry-all bags; leather bags, suitcases and wallets; shoulder bags; textile shopping bags; hand bags; luggage bags; school bags.”
International Class 20
“Furniture; sculptures made from plastic, glass or porcelain; mobiles being decorative articles; storage boxes made from wood for personal items; decorative wooden objects, namely, __{specify type, e.g., wooden wall letters for spelling names and words, etc.}; baskets, not of metal, namely, __{specify type, e.g., baskets for transporting goods for commercial purposes, baker’s bread baskets, etc.}; trophies of plastic; nameplates, not of metal; figures made of plastics.”
International Class 21
“Household or kitchen utensils and containers, namely, __{specify
type, e.g., spatulas, graters, etc.}; mugs; empty bottles and vacuum bottles; statues of china or and
glass; beverage glassware; candlesticks; candle rings; works of art made of glass; coupes and vases; works of art, of porcelain, terra-cotta or and
glass.”
International Class 25
“Clothing, namely, __{specify type, e.g., shirts, pants, dresses, etc.}; footwear; headgear, namely, __{specify type, e.g., hats, caps}; T-shirts, sweat shirts, shirts, blouses, vests; jeans, pants, shorts; underwear; sportswear, namely, __{specify type, e.g., shirts, pants, jackets, etc.}; socks; coats, jackets, suits; skirts; scarves; gloves, mittens; bathing suits, pajamas, negligee robes, bathrobes; caps and hats.”
International Class 26
“Lace and embroidery, ribbons and braids; buttons; hooks and eyes; sewing pins and needles; barrettes [hair-slides], hair pins, and hair
ties; hat pins; ornamental novelty button badges and pins; lace trimmings for clothing; shoe ornaments, not of
precious metal; brassards; buttons; belt buckles.”
International Class 28
“Action figures; play sets for action figures; toys, games and playthings, namely, __{specify Class 28 type, e.g., plush dolls, etc.}; game cards; non-electric hand-held action skill games; soft dolls; toys, namely, __{specify Class 28 type}; stuffed toys, water toys, wooden toys, namely, __{specify Class 28 type, e.g., toy building blocks}; toys made of plastics, namely, __{specify Class 28 type}; children's multiple activity toys; puzzles; balloons; playing cards; bags, cases and sleeves specially adapted for storing and carrying apparatus for video games.”
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.
Therefore, applicant must provide a description of the applied-for mark. The following is suggested:
The mark consists of the stylized wording “SUPERCELL”, with the letters “SUP” on top of the letters “ERC” on top of the letters “ELL”.
RESPONSE GUIDELINES
If applicant does not respond to this Office action within six months of the date on which the USPTO sends this Office action to the International Bureau, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§711, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6(15), 2.66(b)(1).
ASSISTANCE
Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a qualified U.S. attorney specializing in trademark matters to represent applicant in this process and provide legal advice. Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. 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 may not assist an applicant in the selection of an attorney. 37 C.F.R. §2.11.
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.
/Kim L. Parks/
Trademark Examining Attorney
Law Office 112
571.272.6129
kimberly.parks@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.