Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

INTERNATIONAL REGISTRATION NO. 1294225

 

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.

 

Likelihood of Confusion Refusal – Class 16 only

 

Registration of the applied-for mark is refused for goods in Class 16 because of a likelihood of confusion with the mark in U.S. Registration No. 2613384.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

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 and/or services 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, 177 USPQ 563 (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)). 

 

Comparison of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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)-(b)(v).  Similarity in any one of these elements may be sufficient to find the marks 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).

 

Applicant’s mark is BAMBOO stylized.   The mark in the cited registration is BAMBOO and Design.   The marks are similar in sound, appearance and meaning, sharing the identical literal element BAMBOO.  Since the word portions of the marks are identical, the addition of a design element in the cited registration does not obviate the similarity of the marks in this case.  See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).

 

Comparison 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 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).

 

Applicant’s goods are:  “Printed matter; handbooks (manuals); posters; printed publications; teaching materials (except apparatus); drawing instruments; paper; photographs (printed); photograph stands; blackboards; books; comic books; pen cases; cards; cardboard; catalogues; compasses for drawing; pens (office requisites); bookmarkers; calendars; canvas for painting; drawing boards; drawing materials; drawing pads; drawing pens; drawing rulers; erasing products; folders (stationery); fountain pens; ink; ink sticks; marking pens (stationery); nibs; note books; paintbrushes; palettes for painters; pastels (crayons); penholders; transparencies (stationery); writing brushes; writing materials; writing paper; tracing paper; binders; personal organizers; memo pads” in Class 16  

 

Registrant’s goods are “Writing instruments” in Class 16. 

 

Applicant’s “drawing instruments, pen cases, compasses for drawing, pens, drawing materials, drawing pens, fountain pens, marking pens, nibs writing brushes and writing materials” are all encompassed by registrant’s “writing instruments.”  These goods are overlapping and legally identical for purposes of determining likelihood of confusion.  In addition, all of applicant’s other stationery goods are closely related to registrant’s goods because they are used together with writing materials and sold through the same channels of trade. 

 

Attached are copies of Registration Nos.  3280269, 4161487, 3906339 and 4886346 from the USPTO’s X-Search database consisting of third-party marks registered for the same or similar goods as those of both applicant and registrant in this case.  This evidence shows that paper and stationery goods of all kinds and writing instruments may emanate from a single source under a single mark.  See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).

 

Since the respective marks are confusingly similar, and applicant’s goods and the goods in the cited registration are closely related, purchasers of applicant’s goods may mistakenly assume that the goods come from registrant, or that registrant and applicant are somehow related.  Accordingly, there is a likelihood of confusion and registration must be refused for goods in Class 16 under Section 2(d) of the Trademark Act

 

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 class to which the refusal pertains;

 

(2)        Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition in the class 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).

 

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

 

Identification of Goods

 

Certain wording in the identification of goods is indefinite and must be clarified.  See TMEP §1402.01. In addition, the identification of goods contains parentheses.  Generally, parentheses and brackets should not be used in identifications.  TMEP §1402.12.  The USPTO generally uses brackets to indicate goods and/or services that have been deleted from registrations.  See id.  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 or bracketed information into the description of the goods.

 

The indefinite language is set forth in italics below with suggested amending language set forth in bold type.   Wording that must be deleted is set forth between brackets.   Applicant may adopt the following suggested identification, if accurate:

 

“Coordinate input devices for computers; computer cursor control devices namely, digitizer tablets; input tablets for computers; electronic pens in the nature of visual display units; touch panels for computers; electronic whiteboards; input devices for computers; data processing apparatus; software for computer input, namely, computer software for operating a coordinate inputting system and for drawing, painting, and computer assisted drawing (CAD) for computer input device; computer software for recording and processing input information; electronic machines, apparatus and parts therefor, namely, computer peripheral devices; computer hardware and software for recording hand-written digital signature and drawings; computer programs for editing digital photos, digital images and word processing; computers; electronic machines and apparatus for (specify use, e.g. for reading credit cards and recording financial operations); telecommunication machines and apparatus, namely, telecommunications computer terminals; personal digital assistants; downloadable image files containing business and/or education information; downloadable computer software for editing digital photos, digital images and word processing; data media on which computer programs are recorded, namely, blank digital storage media; image processing software; digital cameras; liquid crystal displays; calculating machines; game programs for home video game machines; cases especially made for tablet computers; electronic stationery, namely (specify, e.g. tablet computers, etc.) [(terms too vague in the opinion of the International Bureau - Rule 13(2)(b) of the Common Regulations)]” in Class 9

 

“Printed matter, namely, (specify, e.g. journals featuring (indicate subject matter); handbooks and manuals in the field of (indicate subject matter);  posters; printed publications in the field of (indicate subject matter); printed teaching materials in the field of (indicate subject matter);  [(except apparatus)]; drawing instruments; paper; printed photographs [(printed)]; photograph stands; blackboards; books in the field of (indicate subject matter); comic books; pen cases; printed cards; cardboard; catalogues in the field of (indicate subject matter); compasses for drawing; pens [(office requisites)]; bookmarkers; calendars; canvas for painting; drawing boards; drawing materials for (specify, e.g. for blackboards); drawing pads; drawing pens; drawing rulers; erasing products, namely, erasers; folders [(stationery)]; fountain pens; ink for pens;  ink sticks; marking pens [(stationery)]; pen nibs; note books; paintbrushes; palettes for painters; pastels [(crayons)]; penholders; paper transparencies [(stationery)]; writing brushes; writing materials, namely, (specify, e.g. pencils and pens); writing paper; tracing paper; binders; personal organizers; memo pads; none of the above containing or composed of bamboo” in Class 16

 

An applicant may only amend an identification to clarify or limit the services, but not to add to or broaden the scope of the services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

 

Goods and Services Manual

 

The identification of goods and/or services includes language from the “Alphabetical List” of goods and services from the International Classification of Goods and Services for the Purposes of the Registration of Marks Under the Nice Agreement, published by the World Intellectual Property Organization in Switzerland.  This list was developed for the purpose of classifying goods and/or services, not for the purpose of identifying goods and/or services in U.S. applications.  TMEP §1401.02(c).

 

The USPTO generally requires more definite identifications of goods and/or services than those set forth in the “Alphabetical List.”  TMEP §1401.02(c); see 37 C.F.R. §2.32(a)(6); In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007).  Descriptions of goods and/or services in applications must be specific, explicit, clear, and concise.  TMEP §1402.01; see In re Cardinal Labs., Inc., 149 USPQ 709, 711 (TTAB 1966); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).

 

Therefore, the USPTO recommends that applicants use the USPTO’s U.S. Acceptable Identification of Goods and Services Manual to assist in writing identifications for U.S. applications.  See TMEP §1402.04.  This online searchable manual is available at http://tess2.gov.uspto.report/netahtml/tidm.html.

 

Prior Registrations

 

If applicant is the owner of U.S. Registration No. 4643067, 4797178, 4673518 and others, then applicant must submit a claim of ownership.  37 C.F.R. §2.36; TMEP §812.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration Nos. 4643067, 4797178, 4673518 and others.

 

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

 

/John M. Wilke/

Examining Attorney

Law Office 104

571-272-5871

john.wilke@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.