Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

INTERNATIONAL REGISTRATION NO. 1293676

 

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.

 

INTRODUCTION

 

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.

 

SUMMARY OF ISSUES

 

The applicant must address:

 

• Section 2(d) Refusal – Likelihood of Confusion;
• Mark Description Required; and
• Identification of Goods Amendment Required.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1704989, 4298172, and 4381616.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Here, the applicant's mark is KAISER for animal skins, baby blankets, and hand/foot warmers, presumably for babies, and sleeping bags, and the registrants' marks are PETER KAISER (U.S. Registration No. 1704989) for footwear, KAISER (U.S. Registration No. 4298172) for socks, and PK PETER KAISER (U.S. Registration No. 4381616) for animal skins and a variety of clothing, including hand warmers.  The first and third registrations are owned by the same entity.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant: similarity of the marks, encompassing goods, and similarity of the trade channels of the goods.  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.

 

Similarity 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 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).

 

Here, the applicant's design mark KAISER is confusingly similar to the registrants' typed mark PETER KAISER (U.S. Registration No. 1704989), standard character mark KAISER (U.S. Registration No. 4298172), and design mark PK PETER KAISER (U.S. Registration No. 4381616).

 

The parties' marks contain the same inherently distinctive wording KAISER, which is identical in appearance, sound, and commercial impression, namely, evoking "[a]ny of the emperors of the Holy Roman Empire [], of Austria [], or of Germany []."  http://www.ahdictionary.com/word/search.html?q=Kaiser.  In fact, the only difference in wording between the marks is the marks in U.S. Registration Nos. 1704989 and 4381616 begin with the wording PETER and PK PETER, respectively.  These additions, though, are insufficient to obviate the similarities between the marks.  Specifically, the applicant merely deleted this wording from its mark, and the mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).  Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as the registered marks, and there is no other wording to distinguish it from the registered marks.  In fact, consumers who are familiar with the registrant's PETER KAISER and PK PETER KAISER brand of animals skins and clothing may upon seeing or hearing the applicant's KAISER brand of similar goods perceive the former as being the previously anonymous source of the latter.

 

Additionally, as between the applicant's mark and the mark in U.S. Registration No. 4298172, the applicant incorporates into its mark the entirety of the registrant's mark.  Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); Hunter Indus., Inc. v. Toro Co., 110 USPQ2D 1651, 1660-61 (TTAB 2014) (finding PRECISION and PRECISION DISTRIBUTION CONTROL confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

Lastly, though the applicant's mark and mark in U.S. Registration No. 4381616 contain designs of a smiling king and shaded circle, respectively, these additions do not obviate the similarities between the marks.  Specifically, a shaded geometric shape, such as a circle, does not obviate the commercial impression that the registrant's mark conveys, and given the inherently distinctive wording in the mark, it is equally unlikely that consumers will call for the parties' goods by referencing the designs as to opposed to using words.  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.  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)).  Thus, the wording KAISER remains the dominant element of the marks.

 

For these reasons, when consumers encounter the parties' goods using marks with these similarities, they are likely to be confused as to the source of the goods.  Therefore, the marks are confusingly similar.

 

Relatedness of the Goods

 

The goods of the parties need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i). 

 

The respective goods 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] 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)); TMEP §1207.01(a)(i).

 

First, with respect to applicant’s and registrant’s (U.S. Registration No. 4381616) goods, the question of likelihood of confusion is determined based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

Absent restrictions in an application and 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 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 identifications set forth in the application and registrations have 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 registration uses broad wording to describe the goods, namely, "animal skins" and "hand-warmers", and this wording is presumed to encompass all goods of the type described, including those in applicant's more narrow identification, namely, "[l]amb skins; sewed skins for sacks and bags" and "[h]and warmers for prams and baby buggies".  See http://www.northernmarshfarms.com/index.php/pricing ("Lamb is an animal under a year in age").

 

Additionally, as to the applicant's baby blankets, footmuffs, and baby sleeping bags, the attached evidence establishes that third parties routinely manufacture, market, and sell these goods together with the registrants' shirts, pants, and headwear (U.S. Registration No. 4381616), footwear (U.S. Registration No. 1704989), and socks (U.S. Registration No. 4298172) under the same mark.  See, e.g., http://www.littlegiraffe.com/shop/baby-blankets/receiving-blankets/muslin/leaf-muslin-blanket/, http://www.littlegiraffe.com/shop/baby-blankets/wearable-blankets/stretch-chenille/dream-sack-stretch-chenille/, http://www.littlegiraffe.com/shop/clothing/toddler-boy-clothing/toddler-boy-pants/blue-jean-baby-5-pocket-jeans/, http://www.littlegiraffe.com/shop/clothing/harlow-vintage-polo/, http://www.littlegiraffe.com/shop/clothing/toddler-boy-clothing/toddler-boy-hats/fun-fur/, and http://www.littlegiraffe.com/shop/baby-gifts/boxed-gifts/baby-socks/box-socks-silky-solid-assorted/ (offering baby blankets, baby sleeping bags, pants, shirts, hats, and socks under Little Giraffe mark); http://www.carters.com/carters-baby-baby-boy-blankets, http://www.carters.com/carters-baby-girl-baby-essentials-onepieces/V_121D559.html?navid=carters-RRSearch-productRecs, http://www.carters.com/carters-size-eight/V_23805.html?dwvar_V__23805_color=Color&dwvar_V__23805_size=12-24#q=socks&prefn1=brand&prefv1=carters&start=1, and http://www.carters.com/carters-kid-girl-swim-shop/V_OB38VNRC.html?dwvar_V__OB38VNRC_size=4Y-8Y&dwvar_V__OB38VNRC_color=Color#q=hat&prefn1=brand&prefv1=carters&start=4 (offering blankets, tops, bottoms, shoes, sleeper gowns, socks, and hats under Carter's mark); http://creambebe.com/bebebon-beautiful-pink-fur-bunting-newborn-snowsuit-thick-winter-sack-set.html, and http://creambebe.com/baby-boy/baby-hats.html, http://creambebe.com/baby-girl/baby-blanket.html (offering footmuffs, hats, and baby blankets under Cream Bebe mark).

 

Collectively, this evidence demonstrates that the parties' goods are closely related because they are encompassing in part and they routinely travel in the same trade channels, including under the same mark.  Accordingly, consumers may confuse the source thereof when viewing or hearing KAISER, PETER KAISER, and PK PETER KAISER in the marketplace.

 

Because the marks are confusingly similar and the goods are closely related, consumers are likely to be confused as to the source of the goods.  Thus, registration is refused pursuant to Trademark Act Section 2(d). 

 

Response to Refusal

 

Although the applicant's mark has been refused registration, the applicant may respond to the refusal by submitting evidence and offering argument against the refusal and in support of registration.

 

REQUIREMENTS

 

If the applicant responds to the refusal, then the applicant also must respond to the below requirements.

 

MARK DESCRIPTION REQUIRED

 

Applicant must include a mark description of the literal and design elements in the mark.  37 C.F.R. §§2.37, 2.52(b)(1); see TMEP §807.07(a), (b).

 

Therefore, applicant must submit an accurate and concise description of the literal and design elements in the mark.  37 C.F.R. §2.37; TMEP §§807.07(b), 807.12(c); see TMEP §§808 et seq.  The following mark description is suggested, if accurate: 

 

The mark consists of the wording "KAISER" and a design.  The design is of a shaded square with curved corners.  On the left side of the square is the face of a person smiling and wearing a crown.  "KAISER" appears on its side to the right of this face.

 

IDENTIFICATION OF GOODS AMENDMENT REQUIRED

 

The wording in Class 25 is indefinite and must be clarified.  See TMEP §1402.01.  First, the identification of goods contains parentheses.  Generally, parentheses should not be used in identifications.  TMEP §1402.12.  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).”  Id.

 

Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical information into the description of the goods.

 

Second, the applicant has created an ambiguity by indicating that its hand warmers and footmuffs are for prams, baby buggies, and child car seats.  Class 25 is solely dedicated to articles of clothing, and as presently worded, these clauses do not appear to reference clothing.  Thus, the applicant must specify that its hand warmers and footmuffs are for babies for use in prams, baby buggies, and child car seats.

 

Lastly, sleeping bags belong in Class 20, but if the applicant intended by this wording to mean that it offers a type of sleep sack that babies wear to bed, which is an article of clothing, then it must articulate that using the common commercial or generic name for the goods in Class 25.

 

Therefore, the applicant may adopt the following identification of goods in Class 25, if accurate:

 

Class 25: "Class 25: "Hand warmers for babies for use in prams and baby buggies; footmuffs (not electrically heated) for babies for use in prams and baby buggies, and for babies for use in for child car seats; sleeping bags for babies, namely, {specify definite articles of clothing in Class 25, e.g., one-piece garments for babies for the purpose of sleeping, etc.}."

 

See TMEP §§1402.01, 1402.03.

 

An applicant may only amend an identification to clarify or limit the goods, but not to add to or broaden the scope of the goods.  37 C.F.R. §2.71(a); see TMEP §1904.02(c)(iv).  In an application filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau).  37 C.F.R. §2.85(f); TMEP §§1402.07(a), 1904.02(c).  If an applicant amends an identification to a class other than that assigned by the International Bureau, the amendment will not be accepted because it will exceed the scope and those goods will no longer have a basis for registration under U.S. law.  TMEP §§1402.01(c), 1904.02(c).

 

In addition, in a Section 66(a) application, an applicant may not change the classification of goods 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 from one existing international class to another.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1402.01(c).

 

RESPONSE GUIDELINES

 

For this application to proceed toward registration, applicant must explicitly address each refusal and requirement raised in this Office action.  To respond to the refusal and requirements, applicant should set forth in writing the required changes or statements.

 

If applicant does not respond to this Office action within six months of the issue/mailing date, 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 §§405.04, 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, 2.66(b)(1).

 

Applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

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. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal and requirements 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 U.S. commonwealths or U.S. territories.  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

 

/Kevin G. Crennan/

Trademark Examining Attorney

Law Office 113

(571) 272-7949

kevin.crennan@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.