Examiners Amendment

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

REQUEST FOR RECONSIDERATION DENIED

 

ISSUE/MAILING DATE: 3/25/2019

 

INTERNATIONAL REGISTRATION NO. 0808857

 

This Office action concerns applicant’s request for reconsideration filed on March 4, 2019.

 

This application was refused registration in International Class 11 under Trademark Act Section 2(d), 15 U.S.C. §1052(d), on the ground that the applied-for mark is likely to be confused with the mark ARCTIC WALK-IN COOLERS AND FREEZERS in U.S. Registration No. 5394636. The trademark examining attorney has carefully reviewed applicant’s request for reconsideration of this refusal and is denying the request. See 37 C.F.R. §2.63(b)(3); TMEP §§715.03, 715.03(a)(ii)(D), 718.02(a). 

 

Specifically, applicant’s sole argument against this refusal is that applicant has amended the identification of goods to indicate that all of the goods in International Class 11 are “for domestic or household use.” Applicant then argues that the registrant’s goods “are for commercial use.” The registration, however, places no limitation on the nature of the goods being offered. As noted in the previous Office actions, the comparison of the parties’ goods is based on the goods as they are identified in the application and registration, without limitations or restrictions that are not reflected therein. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); see Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638-39 (TTAB 2009); TMEP §1207.01(a)(iii). Thus, it must be presumed that registrant offers walk-in coolers and freezers for both domestic and commercial use. See, e.g.:

 

• US Cellar Systems, Discover Luxury & Convenience of a Walk-in Refrigerator/Freezer for Your Home, http://www.winecellarrefrigerationsystems.com/walk-in-refrigerator-and-freezer-for-home.aspx

 

• U.S. Cooler, http://www.uscooler.com/ (offering “walk-in coolers & freezers” for “residential” applications)

 

Indeed, registrant offers walk-in coolers for domestic use. See Residential Walk-in Coolers, http://www.arcticwalkins.com/residential/ (“Arctic Walk-in Coolers can meet your needs of a cooler or freezer for Residential Walk-in Coolers. Our customized Residential Walk-in Coolers can be made to fit in your house dimensions.”). Thus, merely indicating that applicant’s goods are “for domestic or household use” is not sufficient to overcome this refusal, given that the registration contains no similar limitations.

 

Accordingly, the request for reconsideration is DENIED. The Section 2(d) refusal made final in the Office action dated September 4, 2018, is maintained and continues to be final. See TMEP §715.03(a)(ii)(D). 

 

Furthermore, since applicant has not filed an appeal with the Trademark Trial and Appeal Board, and there is no time remaining in the response period, the application is being held partially abandoned as to International Class 11. See 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a)-(a)(1); TMEP §§715.03(a)(ii)(D), (c), 718.02(a), 1714.01(a)(ii). Consequently, International Class 11 has been deleted from the application, which will now proceed with International Class 7 only.

 

Applicant may respond by filing a petition to the Director to request a reversal of the decision to abandon the application in part. TMEP §§715.03(a)(ii)(D), 718.02(a), 1713.01; see 37 C.F.R. §2.146. However, the Director will reverse the decision only if there is clear error or an abuse of discretion. In re GTE Educ. Servs., 34 USPQ2d 1478, 1479-80 (Comm’r Pats. 1994); TMEP §§715.03(a)(ii)(D), 1713.01. A petition may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §2.6(a)(15)(ii).

 

 

/Andrew Leaser/

Trademark Examining Attorney

Law Office 117

(571) 272-1911

andrew.leaser@uspto.gov

 

 

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 Trademark Electronic Application System (TEAS) form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

 

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/25/2019 FOR U.S. APPLICATION SERIAL NO.79210666

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.gov.uspto.report/, enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.