UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

 

INTERNATIONAL REGISTRATION NO. 1350197

 

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.

 

SUMMARY OF ISSUES:

 

• Partial Section 2(d) Refusal – Likelihood Of Confusion
• Indefinite Identification Of Goods And Services
• Entity Clarification Required

 

PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

This refusal applies only to the specified services.

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3873893 and 4180151.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

The applicant has applied to register TRUSTI for “veterinary and animal hygiene services; hygienic care for animals; advisory services relating to the care of pet animals; including all the aforesaid services provided online through the internet or intranets and by other communication media” in International Class 44.  

 

U.S. Registration No. 3873893 is TRUSTY VET for “Veterinary services; pet grooming services” in International Class 44. 

 

U.S. Registration No. 4180151 is TRUSTY VET AFFORDABLE PET CARE for “Veterinary services; pet grooming services” in International Class 44. Both registrations are owned by Trusty Vet Licensing, LLC.

 

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 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, 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, similarity and nature of the services, and similarity of the trade channels of the 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 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).

 

In the present case, the applied-for mark is similar to the registered marks because they include the terms TRUSTI and TRUSTY which 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).  The marks are likely to be confused due to use of the phonetically similar wording TRUSTI and TRUSTY at the beginning of the marks.

 

The registered marks also includes the wording VET and AFFORDABLE PET CARE that is not included in the applied-for mark.  However, the absence of that wording in the applied-for mark does not prevent a likelihood of confusion.  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).  The applied-for mark does not create a distinct commercial impression because it contains the same phonetically common wording as the registered mark, and there is no other wording to indicate that registrant is not the source of applicant’s services.  As a result, the applied-for mark and the registered marks are sufficiently similar in their entireties.

 

Also registrant disclaimed the wording VET and AFFORDABLE PET CARE as generic and descriptive of the services.  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).  Disclaimed matter that is descriptive of or generic for a party’s services is typically less significant or less dominant when comparing marks.  See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii).  As the wording VET and AFFORDABLE PET CARE in the registered marks is descriptive, it is less significant in terms of affecting the mark’s commercial impression, and renders the wording TRUSTY the more dominant, source-indicating element of the registered marks.

 

Thus, when looking at the various pet care services identified in the marks, a consumer would be confused as to the source of the services because of the use of the word TRUSTY or TRUSTI.  Therefore, the marks are confusingly similar.

 

Comparison of the Services

 

With respect to applicant’s and registrant’s services, the question of likelihood of confusion is determined based on the description of the services 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/or registration, the identified 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 services of the type described.  See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).   

 

Applicant and registrant both identify veterinary services.  As these services are identical, it is presumed that these services travel in all normal channels of trade, and are available to the same class of purchasers.  See Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012).

 

In this case, the identification set forth in the application and registrations have no restrictions as to nature, type, channels of trade, or classes of purchasers.  Registrant identifies all pet grooming services which is broad enough to include the animal hygiene services identified by applicant.  Applicant identifies all advisory services relating to the care of pet animals, which is broad enough to include the veterinary services identified by registrant.  As registrant’s services encompass applicant’s services, or vice versa, it is presumed that these services travel in all normal channels of trade, and are available to the same class of purchasers. 

 

Thus, when confronted by applicant’s and registrant’s services, consumers would likely be confused as to the source of the services because they are identical or similar animal care services.  Therefore, the services are closely related.

 

Since the marks are similar and the services are related, there is a likelihood of confusion as to the source of applicant’s services.  Therefore, registration is refused pursuant to Section 2(d) of the Trademark Act.

 

The stated refusal refers to the following services and does not bar registration for the other services:  “veterinary and animal hygiene services; hygienic care for animals; advisory services relating to the care of pet animals; including all the aforesaid services provided online through the internet or intranets and by other communication media” in International Class 44.  

 

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 and/or services 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 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).

 

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

 

INDEFINITE IDENTIFICATION OF GOODS AND SERVICES

 

Applicant identified “Tubes and apparatus for enteral feeding, including gastrostomy feeding tubes and enteral feeding safety devices; intravenous feeding tubes; enteral feeding instruments, namely, bags, pumps and tubes; endobronchial tubes; respiratory instruments, apparatus and appliances, enteral feeding instruments and apparatus; bags, pumps and tubes, all for use with all the aforesaid goods; catheters; meters and collection bags for animal fluids, for veterinary purposes; animal feeding apparatus in this class, and including feeding bottle teats, feeding bottles, and equipment related thereto, in this class; parts and fittings for all the aforesaid goods” in International Class 10 and “Provision of animal husbandry services; veterinary and animal hygiene services; agriculture services; hygienic care for animals; advisory services relating to the care of pet animals; including all the aforesaid services provided online through the internet or intranets and by other communication media” in International Class 44.

 

In International Class 10, the wording “Tubes and apparatus for enteral feeding, including gastrostomy feeding tubes and enteral feeding safety devices” is indefinite as it uses the indefinite term “including” instead of specifically identifying the type of apparatus.  Applicant should replace “including” with definite wording such as “namely” and list the types of apparatus, such as tubes for enteral feeding.  The wording “respiratory instruments, apparatus and appliances” is indefinite as it does not specify the type of instruments, apparatus and appliances, such as respiratory masks for veterinary purposes.  The wording “enteral feeding instruments and apparatus” is indefinite as it does not specify the type of instruments and apparatus, such as tubes for enteral feeding. The wording “animal feeding apparatus in this class, and including feeding bottle teats, feeding bottles, and equipment related thereto, in this class” also uses the indefinite term “including” and should replace it with definite wording such as “namely” and specify the apparatus, such as feeding bottle valves.  The wording “parts and fittings for all the aforesaid goods” is indefinite as it does not specify the parts and fittings, such as surgical clips. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

In International Class 44, the wording “agriculture services” is indefinite as it does not specify the nature of the services, such as agricultural advice.  The wording “advisory services relating to the care of pet animals” is indefinite and overbroad as it does not include the type of care.  Various pet care related services are classified in multiple classes based on the type of care, such as pet day care services in International Class 43 and pet grooming in International Class 44.  As applicant has filed under Article 66(a), applicant may only identify International Class 44 pet care services, such as advisory services relating to the hygienic care of pet animals. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

 

This information is necessary to meet the Office’s requirement for identifications that are specific, definite, clear, accurate, and concise, for proper classification of goods and services and for the Office to make appropriate likelihood of confusion determinations.  TMEP §1402.01; see In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d at 1298-99. 

 

Applicant may adopt the following identification, if accurate:

 

Class 10  –

Tubes and apparatus for enteral feeding, namely, gastrostomy feeding tubes, enteral feeding safety devices, and {specify apparatus, e.g., tubes for enteral feeding}; intravenous feeding tubes; enteral feeding instruments, namely, bags, pumps and tubes; endobronchial tubes; respiratory instruments, apparatus, and appliances, namely, {specify apparatus, e.g., respiratory masks for veterinary purposes}; enteral feeding instruments and apparatus, namely, {specify apparatus, e.g., tubes for enteral feeding};  bags, pumps and tubes, all for use with all the aforesaid goods; catheters; meters and collection bags for animal fluids, for veterinary purposes; animal feeding apparatus and equipment related thereto, in this class, namely, feeding bottle teats, feeding bottles, and {specify apparatus and equipment, e.g., feeding bottle valves}; parts and fittings for all the aforesaid goods, namely, {specify parts and fittings, e.g., surgical clips}.

 

Class 44  –

Provision of animal husbandry services; veterinary and animal hygiene services; agriculture services, namely, {specify nature of services, e.g., agricultural advice}; hygienic care for animals; advisory services relating to the {specify International Class 44 care, e.g., hygienic} care of pet animals; including all the aforesaid services provided online through the internet or intranets and by other communication media.

 

See TMEP §1402.01.

 

Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed.  See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv).  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably narrowed.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).  Additionally, for applications 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); and the classification of goods and/or services may not be changed from that assigned by the International Bureau.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b).  Further, in a multiple-class Section 66(a) application, classes may not be added or goods and/or services transferred from one existing class to another.  37 C.F.R. §2.85(d); TMEP §1401.03(d).

 

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.  See TMEP §1402.04.

 

ENTITY CLARIFICATION REQUIRED

 

Applicant’s business name includes the foreign business designation “LIMITED”; however, applicant set forth “Limited Liability Company” as the entity type in the application.  The business designation “limited” is generally considered the equivalent of a “limited company.”  See TMEP app. D.  Therefore, applicant must clarify the entity type in the application.  See TMEP §803.03(i).  Applicant may satisfy this requirement by amending the entity type to one of those immediately listed above from Appendix D of the Trademark Manual of Examining Procedure (TMEP) for this business designation, as appropriate.  See id. 

 

Alternatively, if applicant maintains that the entity type in the application properly identifies applicant’s entity type, applicant must provide an explanation as to why the identified entity type is more similar to a “limited liability company” in this instance than to the entity types listed in TMEP Appendix D.  See id.

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  TMEP §§1201, 1201.02(b).

 

ALSO, APPLICANT SHOULD NOTE THE FOLLOWING ADVISORY THAT APPLIES TO APPLICATIONS FILED UNDER SECTION 66(a) OF THE TRADEMARK ACT:

 

§66(a) Applications – Applicant May not Amend or Add to Filing Bases

 

For applications originally filed under Trademark Act Section 66(a), the filing basis may not be changed nor may more than one filing basis be asserted.  37 C.F.R. §§2.34(b) 2.35(a); TMEP §§806.01(e), 1904.01(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. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusals 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. 

 

/Timothy Schimpf/

Examining Attorney

Law Office 113

(571) 272-9072

timothy.schimpf@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.