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. 79257285
MARK: PT
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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: Obshchestvo s ogranichennoy otvetstvenno ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
INTERNATIONAL REGISTRATION NO. 1463085
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.
Issues Addressed in this Office Action:
A. Refusal—Likelihood Of Confusion
B. Identification of Goods
C. Description of Mark
A. Refusal—Likelihood Of Confusion in Class 32
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or 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.
The applicant applied to register PT (stylized) for “Drinking waters; aerated water; mineral water; table waters; seltzer water; non-alcoholic beverages, namely, kvass; non-alcoholic cocktail mixes; non-alcoholic beverages flavored with coffee; non-alcoholic honey-based beverages; isotonic beverages; lemonades; non-alcoholic fruit juice beverages; non-alcoholic beverages flavored with tea” in Class 32.
The registered marks are:
P&T for “Non-alcoholic carbonated and non-carbonated beverages, in particular drinks flavoured with tea, herbal-based drinks in the nature of soft drinks or juices flavoured with tea and fruit drinks flavoured with tea, namely, juices, waters and flavoured carbonated beverages; energy drinks, fruit beverages and fruit juices, mineral and aerated waters; syrups and other preparations for making juices, waters and flavoured non-alcoholic carbonated beverages; instant beverage powder for making juices, waters and flavoured non-alcoholic carbonated beverages, extracts and essences for making non-alcoholic juices, waters and flavoured non-alcoholic carbonated beverages” in Class 32, and
P & T for “Coffee, tea and herbal teas other than for medicinal use and fruit teas, tea extracts, iced tea, tea-based beverages, herb tea-based beverages not for medical purposes and fruit tea-based beverages; preparations predominantly consisting of tea extracts and/or extracts of tea substitutes for use as flavorings, other than essential oils, in powdered and/or granulated and/or instant form.”
In this case, both the registered marks and the applied-for mark contain the term P and T. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
In this case, the beverage goods are highly related, where not identical. Where the goods and/or services of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
For the foregoing reasons the mark is refused registration under Section 2(d). Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
(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).
B. Identification of Goods
Wording in the identification of goods/services is (1) indefinite and must be clarified, (2) overbroad in that it encompasses goods/services in more than one international classification and/or (3) misclassified. See TMEP §1402.01. Where indicated, the applicant must delete all parenthesis and brackets. Please see suggested identification below for specific wording that requires clarification and/or reclassification.
Applicant may adopt the following identification, if accurate. Please note that bolded wording/punctuation indicates a suggested addition(s)/amendment(s) to applicant’s current identification. In addition, please note in a Trademark Act Section 66(a) application, classification of goods and/or services may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Additionally, classes may not be added or goods and/or services transferred from one class to another in a multiple-class Section 66(a) application. 37 C.F.R. §2.85(d); TMEP §1401.03(d).
Class 25
Bandanas; underwear; sweat-absorbent underwear; boxer shorts; ski boots; boots for sports; football boots; valenki (felted boots); galoshes; leggings being leg warmers; gaiters; jeans; vests; sports jerseys; hosiery; stockings; neck scarfs; kimonos; sun visors being headwear; clothing combinations; wet suits for water-skiing; bathing suits; beach clothes namely [specify goods]; puttees; leotards; jackets; stuff jackets; fishing vests; sports singlets; sleep masks; muffs; footmuffs, not electrically heated; heelpieces for footwear; ear muffs; sweat-absorbent socks; footwear; beach shoes; sports shoes; clothing namely [specify goods]; outerclothing namely [specify goods]; ready-made clothing namely [specify goods; winter sports clothing namely [specify goods]; tennis clothing namely [specify goods]; clothing of imitations of leather namely [specify goods]; clothing of leather namely [specify goods]; waterproof clothing namely [specify goods]; uniforms; gloves; ski gloves; pajamas; headbands being clothing; braces for clothing; ponchos; girdles; belts being clothing; money belts; non-slipping devices for footwear; thermal socks; heavy coats; headwear; aprons; dressing gowns; bath robes; sweat-absorbent stockings; shawls; caps; shower caps; bathing caps; sashes for wear
Class 32 (no change)
Drinking waters; aerated water; mineral water; table waters; seltzer water; non-alcoholic beverages, namely, kvass; non-alcoholic cocktail mixes; non-alcoholic beverages flavored with coffee; non-alcoholic honey-based beverages; isotonic beverages; lemonades; non-alcoholic fruit juice beverages; non-alcoholic beverages flavored with tea
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.
C. Description of Mark
The following description is suggested, if accurate: The mark consists of the stylized letters PT.
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 Neville/
Trademark Examining Attorney
Law Office 114
(571) 272-9203
Brian.neville@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.