UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 79250340
MARK: PALADIN
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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: KBA-NotaSys SA
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1446169
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.
Section 2(d) Likelihood of Confusion Refusal
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
In this case, applicant’s mark is PALADIN (standard character) for goods listed as “Paper securities, particularly banknotes, security papers, checks, traveler's checks, securities, identity cards, being non magnetic and non coded, passports, being non magnetic and non coded, labels not of fabric, paper ribbons, paper tapes formed by a substrate, particularly a paper or plastic substrate comprising a security element, particularly alphanumeric markings, bar codes or elements with a color-shifting or latent image effect and/or with ribbons, tapes, labels comprising an element with a color-shifting or latent image effect” in International Class 16.
Registrant’s mark is PALADINID (standard character) for services listed as “Reseller services in the field of industrial equipment and
supplies, namely, distributorship services in the field of ink based barcode labeling equipment and supplies, data collection equipment and supplies, and ink based product identification equipment
and supplies” in International Class 35.
Here, applicant’s mark and registrant’s mark share the identical dominant and/or only word portion consisting of the distinctive term “PALADIN”. As such, the marks are confusingly similar in general sound, appearance, meaning, connotation and commercial impression. 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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
Furthermore, the examining attorney points out that applicant’s mere deletion of the suffix “ID” from registrant’s mark, is not sufficient to obviate a finding of a likelihood of confusion under Trademark Act Section 2(d). Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Accordingly, applicant’s mark and registrant’s mark are sufficiently similar, such that consumer confusion in the marketplace is likely.
Comparison of the Goods and Services
In this case, registrant’s services listed as “Reseller services in the field of industrial equipment and supplies, namely, distributorship services in the field of ink based barcode labeling equipment and supplies, data collection equipment and supplies, and ink based product identification equipment and supplies” in International Class 35 are broad enough to encompass a number of applicant’s goods listed as “Paper securities, particularly banknotes, security papers, checks, traveler's checks, securities, identity cards, being non magnetic and non coded, passports, being non magnetic and non coded, labels not of fabric, paper ribbons, paper tapes formed by a substrate, particularly a paper or plastic substrate comprising a security element, particularly alphanumeric markings, bar codes or elements with a color-shifting or latent image effect and/or with ribbons, tapes, labels comprising an element with a color-shifting or latent image effect” in International Class 16.
For example, registrant’s services listed in part as “Reseller services in the field of industrial equipment and supplies, namely, distributorship services in the field of ink based barcode labeling equipment and supplies” in International Class 35 is broad enough to feature applicant’s goods listed in part as “labels not of fabric” and “paper tapes formed by a substrate, particularly a paper or plastic substrate comprising a security element, particularly alphanumeric markings, bar codes or elements with a color-shifting or latent image effect and/or with ribbons, tapes, labels comprising an element with a color-shifting or latent image effect” in International Class 16.
Likewise, registrant’s services listed in part as “Reseller services in the field of industrial equipment and supplies, namely, distributorship services in the field of…and ink based product identification equipment and supplies” in International Class 35 are broad enough to feature applicant’s goods listed in part as “labels not of fabric” and “paper tapes formed by a substrate, particularly a paper or plastic substrate comprising a security element, particularly alphanumeric markings, bar codes or elements with a color-shifting or latent image effect and/or with ribbons, tapes, labels comprising an element with a color-shifting or latent image effect” in International Class 16.
Therefore, confusion is likely, as consumers would believe that both applicant’s goods and registrant’s services emanate from a single source. Accordingly, registration is refused under Trademark Act Section 2(d).
Identification of Goods is Indefinite – Applies to Specific Goods in Class 16 ONLY
The wording “traveler’s checks” in the identification of goods is indefinite and must be clarified because it lacks the requisite specificity as to the common commercial name of said goods in International Class 16 (e.g., “printed traveler’s checks”). See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language.
Note: The examining attorney sets forth below, the suggested changes to the identification of goods
Applicant may adopt the following wording in International Class 16, if accurate:
“Paper securities, particularly banknotes, security papers, bank checks, printed traveler's checks, printed paper securities, volunteer identity cards, being non-magnetically encoded, non-magnetically encoded identification documents, namely, blank passports, labels not of fabric, paper ribbons, other than haberdashery or hair decorations, paper tapes having paper and plastic substrates and also featuring alphanumeric markings, bar codes, color-shifting elements, latent images, and also featuring paper ribbons, paper tapes, and paper labels with the color-shifting feature and latent image feature”; in International Class 16.
Scope of Goods (Advisory)
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.
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.
/Brian P. Callaghan/
Trademark Examining Attorney
U.S. Patent & Trademark Office
Law Office 108
Ph: (571) 272-4906
brian.callaghan@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.