Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

NONFINAL OFFICE ACTION

 

 

International Registration No. 1518307

 

Notice of Provisional Full Refusal

 

Deadline for responding.  The USPTO must receive applicant’s response within six months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned.  To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.”  The mailing date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.” 

 

Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS).  A link to the appropriate TEAS response form appears at the end of this Office action.

 

Discussion of provisional full refusal.  This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on Trademark Act Section 66(a).  See 15 U.S.C. §§1141f(a), 1141h(c). 

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• Section 2(d) refusal - partial
• Disclaimer requirement
• Identification of goods requirement – International Class 9
• Identification of goods requirement – International Class 10
• Attorney requirement

 

Section 2(d) Refusal – Likelihood of Confusion

 

THIS PARTIAL REFUSAL APPLIES TO CLASS 9 ONLY

 

Registration of the applied-for mark is refused as to the goods in International Class 9 because of a likelihood of confusion with the marks in U.S. Registration Nos. 3848654, 5586536 and 5618082.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying 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) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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. 

 

Here, the applicant applied to register the mark AVA ADVANCED VISION ACCURACY for, at issue, spectacles; sunglasses; goggles for sports; spectacle frames; ophthalmic lenses; spectacle lenses, including organic plastic lenses, mineral lenses, corrective lenses, progressive lenses, sunglass lenses, polarized lenses, filter lenses, tinted lenses, colored lenses, light-sensitive lenses, photochromic lenses, treated lenses, coated lenses, anti-reflective lenses, semi-finished lenses; blanks for spectacle lenses; semi-finished blanks for spectacle lenses; contact lenses; cases for spectacle lenses; cases for ophthalmic lenses; spectacle cases; cords and chains for spectacles; downloadable electronic publications in the field of optics and ophthalmic optics; downloadable electronic information guides and documents in the field of optics and ophthalmic optics in International Class 9.

 

The registered marks are AVA RENEE for, inter alia, eyeglasses and sunglasses, reading glasses in International Class 9; BURNT & AVA for eyeglass cases in International Class 9; and DAVE & AVA for, inter alia, spectacles, sunglasses, eyeglasses, and cases therefor in International Class 9.

 

Similarity of the Marks

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).

 

In the instant case, the dominant portion of the applicant’s mark is “AVA” in large stylized font.  The substitution of the descriptive and smaller wording “ADVANCED VISION ACCURACY” for the wording “RENEE” and “BURNT &” and “DAVE &” in the registered marks does not distinguish it from the registered marks.

 

Adding or substituting a term(s) to a registered mark generally does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

Accordingly, since the marks are so similar in sound, appearance and overall commercial impression, confusion as to source is likely.

 

Relationship Between the Goods

Here, the applicant’s goods at issue and the registrants’ goods are highly related and identical in part.  The goods would be found in the same channels of trade and would be available to the same potential consumers.  The applicant and registrants all provide a variety of vision products.

 

Here, the registrant in U.S. Registration No. 5618082 provides spectacles, sunglasses, eyeglasses, and cases therefor and the applicant goods include spectacles, sunglasses and spectacle cases.  The registrant in U.S. Registration No. 5586536 provides eyeglass cases and the applicant goods include spectacle cases.  The registrant in U.S. Registration No. 3848654 provides eyeglasses and sunglasses and reading glasses, and the applicant’s goods also include spectacles and sunglasses.  As the attached dictionary excerpt from macmillandictionary.com demonstrates, spectacles and eyeglasses are synonyms.  Thus, the applicant’s and registrants’ goods are identical in part.

 

When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services 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)). 

 

In this case, the goods and/or services in the application and registrations are identical in part.  Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services.  See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, applicant’s and registrant’s goods and/or services are related.  

 

Accordingly, since there is no overriding factor to distinguish applicant’s mark from the marks already registered, registration must be refused in part because the average purchaser would be likely to conclude that the applicant’s goods in International Class 9 and those cited in U.S. Registration Nos. 3848654, 5586536 and 5618082 emanate from a common source of origin.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

 

Disclaimer

Applicant must disclaim the wording “ADVANCED VISION ACCURACY” because it is merely laudatory and descriptive of the alleged merit of applicant’s goods and/or services.  See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1256, 103 USPQ2d 1753, 1759 (Fed. Cir. 2012); TMEP §1209.03(k).

 

“Self-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods [or services].”  DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d at 1256, 103 USPQ2d at 1759 (quoting In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)).  Thus, wording such as “ultimate,” “best,” “greatest,” and the like are generally considered laudatory and descriptive of an alleged superior quality of the goods and/or services.  See In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re The Boston Beer Co., 198 F.3d at 1373-74, 53 USPQ2d at 1058-59; TMEP §1209.03(k).

 

The term ADVANCED VISION ACCURACY describes, in a laudatory manner, that the applicant’s vision products provide a high standard of vision accuracy. The attached evidence from macmillondictionary.com demonstrates the laudatory nature of the wording.  Therefore, this wording is merely laudatory of the supposed superior quality of the goods and/or services.

 

Applicant may respond to this issue by submitting a disclaimer in the following format:

 

No claim is made to the exclusive right to use “ADVANCED VISION ACCURACY” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.

 

Identification of Goods - International Class 9

The identification for “downloadable electronic publications” in International Class 9 is indefinite must be clarified because the wording does not make clear the nature of the publications.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1402.11(a)(x).  Applicant must amend this identification to specify the common name of the type of publications, such as brochures, newsletters, or magazines.   The identification must be specific, definite and concise.

 

Applicant may adopt the following wording in International Class 9, if accurate:  Spectacles; sunglasses; goggles for sports; spectacle frames; ophthalmic lenses; spectacle lenses, including organic plastic lenses, mineral lenses, corrective lenses, progressive lenses, sunglass lenses, polarized lenses, filter lenses, tinted lenses, colored lenses, light-sensitive lenses, photochromic lenses, treated lenses, coated lenses, anti-reflective lenses, semi-finished lenses; blanks for spectacle lenses; semi-finished blanks for spectacle lenses; contact lenses; cases for spectacle lenses; cases for ophthalmic lenses; spectacle cases; cords and chains for spectacles; downloadable electronic publications, namely, [specify nature of publications, e.g., books, magazines and pamphlets] in the field of optics and ophthalmic optics; downloadable electronic information guides and documents in the field of optics and ophthalmic optics provided via a website.

 

Identification of Goods - International Class 10

The identification of goods is indefinite and must be clarified because the identification must be specific, definite and concise.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.

 

Additionally, the wording “including” in the identification of goods is indefinite and must be deleted and replaced with a definite term, such as “namely,” “consisting of,” “particularly,” or “in particular.”  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03(a).  The identification must be specific and all-inclusive.  This wording is an open-ended term (e.g., “including,” “such as”) that is not acceptable because it fails to identify specific goods.  See TMEP §1402.03(a). 

 

Applicant may adopt the following wording in International Class 10, if accurate:  Ophthalmologic instruments, namely, [specify type of instrument, e.g., eye droppers]; apparatus for ophthalmologic tests, namely, [specify, e.g., eye testing machines and apparatus, eye charts for medical examination use]; instruments for diagnosis in ophthalmology, namely, [specify, e.g., medical imaging devices for eyes]; medical imaging apparatus for ophthalmologic use; tomographs and angiographs for medical ophthalmologic use; ophthalmoscopes; ophthalmologic diagnostic equipment in the nature of keratometers; ophthalmometers; pupillometers for measuring pupillary distance; corneal reflection pupillometers for measuring pupillary ractivity to stimulus; phoropters; frontofocometers; projection lensometers; vertex refractionometers for medical use; eye testing apparatus; apparatus for screening vision defects and disorders; apparatus for measuring and testing visual acuity and vision; apparatus and instruments for carrying out reading and visual acuity tests, namely, reading scales; vision testing apparatus and instruments, in particular for the examination of visual behavior in the nature of [specify, e.g., cards printed with lines of varying widths used for testing and analyzing vision]; eye testing machines and apparatus, namely, apparatus and instruments for detecting and measuring eye and head movements in response to visual stimuli; parts and fittings for all the aforesaid goods, namely, head rests, chin rests and nose rests; eye testing machine component parts, namely, removable covers and separators for eyesight testing.

 

Advisory – Identification of Goods and/or Services

Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods and/or services may not later be reinserted.  See 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.

 

Applicant must be represented by a U.S.-licensed attorney

An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state or territory.  37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019).  An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  A juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities.  37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A.  Because applicant is foreign-domiciled, applicant must appoint such a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration.  37 C.F.R. §2.11(a).  See Hiring a U.S.-licensed trademark attorney for more information.

 

Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant.  37 C.F.R. §2.11(a).  Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future submissions in this application.  And applicant is not authorized to make amendments to the application. 

 

To appoint or designate a U.S.-licensed attorney

To appoint an attorney, applicant should submit a completed Trademark Electronic Application System (TEAS) Change Address or Representation form.  The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if any.  Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii).

 

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

 

/Andrea Koyner Nadelman/

Trademark Examining Attorney

U.S. Patent and Trademark Office, Law Office 110

(571) 272-9370

andrea.nadelman@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.