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. 79293867
Mark: MILAN
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Correspondence Address:
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Applicant: MARCO DACHS, S.A.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1550899
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.
Section 2(d) Refusal – Likelihood of Confusion
Note: the following refusal only pertains to the goods in Classes 16 and 18
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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
The applicant’s mark consists of the term “MILAN” in stylized form.
The mark in the ‘038 registration consists of the term “MILAN” in stylized form.
The mark in the ‘826 registration consists of the term “MYLAN” in standard characters.
The applicant’s mark and the mark in the ‘038 registration have the same spelling, sound and commercial connotation. The stylization of both marks is also similar.
As to the ‘826 mark, the spelling only differs by one letter – registrant uses the letter “Y” while the applicant uses the letter “I”. As such, the marks are similar in appearance and connotation. There is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re The Belgrade Shoe Co., 411 F.2d 1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969)); TMEP §1207.01(b)(iv). The marks in question could clearly be pronounced the same; such 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).
Additionally, a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
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., 901 F.3d 1367, 1373, 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 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Comparison of the Goods
The applicant’s goods in Classes 16 and 18 are identified as follows:
Class 16:
Paper and cardboard; printing products (printed matter); bookbinding material; photographs; stationery and office supplies, except furniture; adhesives (glues) for stationery or household use; drawing materials and artists' materials; paintbrushes; instructional or teaching material; sheets, films and bags of plastic materials for wrapping and packaging; printing type, printing blocks; notebooks; writing or drawing books; pencil sharpeners; ball-point pens; pencils; aquarelles; paints (stationery); fountain pens; rubber erasers; adhesive paper for notes; pencil cases; pen cases; stationery cases; diaries; day planners; pencil lead holders; pen and mechanical pencil sets; pencil leads; color pencils; chalk; color chalks; chalk for painting; markers; highlighting pens; coloring pens; refills for markers; highlighting markers; drawing rulers; rulers for blackboards; drafting rulers; drawing rulers; compasses for drawing; compasses for drawing; correcting tapes (office requisites); correcting tapes for type; correcting fluids [office requisites]; paper clips; clips for offices; paper clips; stapling presses; electric staplers for offices; staples; staples for offices; office glue; glue for stationery purposes; glues for household use; glue sticks for stationery; adhesive tapes for stationery use; adhesive tapes for packaging; charcoal pencils; charcoal pencils for drawing; charcoal pencils for artists; binders for office use; document files; filing folders; modeling clay; modeling paste; paint trays; blackboard erasers; blackboard markers; bookmarkers; engraving plates; cardboard tubes; glue for stationery or household use
Class 18:
Backpacks; sports bags; hip bags; handbags; bags; beach bags; bags for sports; bags of leather; bags made of imitation leather; suitcases; reusable shopping bags; school backpacks; travel bags for footwear; travel bags; document cases
The goods in the two registrations are identified as follows:
The ‘038 Registration
Class 16:
rubber erasers, pencils, markers and instruments for writing; adhesive paper, adhesive bookmarks, glues for stationery or household purposes, wax for arts and crafts painting, paint boxes, arts and crafts paint kits, notebooks, yearbooks, paper for arts and crafts, pastes for modeling for arts and crafts, compasses for drawing, cases for school and office sets, plan holder cardboard tubes, chalk adhesive tapes for arts and crafts, pencil sharpeners, drawing pins for arts and crafts, paper clips, staples for stationery purposes, drawing rulers, drawing squares, drawing t-squares, stencils for stationery and drawing use, folders, stationery articles, namely writing paper, envelopes, writing tablets, writing pads
The ‘826 Registration
Class 18:
accessories, namely, handbags, luggage, carry-on luggage, garment bags for travel, tote bags, weekend bags, overnight bags, backpacks; rucksacks, all purpose sports bags, duffel bags, wallets, clothing for animals
Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the application uses broad wording to describe its writing, drawing, paper and office supply goods in Class 16 and its bags in Class 18, which presumably encompasses all goods of the type described, including registrant’s more narrow writing, drawing, and art goods in the ‘038 registration and the bags in the ‘826 registration. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)). Thus, applicant’s and registrant’s goods are related.
The goods of the parties clearly overlap. The applicant’s goods are broad enough to encompass the goods in the two registrations. Additionally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
Here, the marks are virtually identical in pronunciation, commercial meaning and spelling. The goods of the parties are similar and would travel in identical channels of trade. For the reasons cited, the examiner finds there is a likelihood of confusion and registration is refused under Section 2(d) of the Trademark Act.
Advisory – Ownership of Cited Registration
(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded;
(2) Submit copies of documents evidencing the chain of title; or
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration Nos. 2746038.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #9; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
Advisory – Request to Divide
In response to a refusal or requirement that pertains only to certain classes, goods, and/or services, an applicant may file a request to divide the application (form # 3) into two or more separate applications so that any acceptable classes, goods, and/or services may be transferred to the divided out application(s) and proceed toward registration. See 37 C.F.R. §2.87; TMEP §1110 et seq. Any outstanding deadline in effect at the time the application is divided will generally apply to each new divided out application. See 37 C.F.R. §2.87(e); TMEP §1110.05 (see list of exceptions).
There is a fee for each new application created. See 37 C.F.R. §§2.6(a)(19)(ii), 2.87(b); TMEP §1110.04. And if dividing out some, but not all, of the goods or services within a class, an additional application filing fee will be required for each new separate application created by the division. 37 C.F.R. §§2.6(a)(1)(i)-(iii), 2.87(b); TMEP §1110.02.
Requirement for Definite Identification of Goods
Applicant may substitute the following wording, if accurate:
Class 8:
Scissors; scissors for paper; scissors for children; box cutters; gouges being hand tools; hand tools for sculpting or working with modeling clay, namely, chisels and loops
Class 9:
Calculators; pocket calculators; hand-held calculators; electronic agendas; audiovisual teaching apparatus, namely, [specify the product by common commercial name e.g. film projector, video recorder, overhead projector, etc.]; digital notepads; magnifying glasses; calculating machines
Class 16:
Paper and cardboard; printing products being printed matter, namely, [specify the items by common commercial name]; bookbinding material; photographs; stationery and office supplies, except furniture, namely, [specify the supplies by common commercial name]; adhesives being glues for stationery or household use; drawing materials and artists' materials, namely, [specify the items by common commercial name, e.g. drawing paper, canvas for painting, palettes for painters, etc.]; paintbrushes; printed instructional or teaching materials in the field of [specify subject matter]; plastic sheets, films and bags for wrapping and packaging; printing type, printing blocks; notebooks; writing or drawing books; pencil sharpeners; ball-point pens; pencils; aquarelles; arts and crafts paint kits; fountain pens; rubber erasers; adhesive note paper; pencil cases; pen cases; stationery cases; desk diaries; day planners; pencil lead holders; pen and mechanical pencil sets; pencil leads; color pencils; chalk; color chalks; chalk for painting; markers; highlighting pens; coloring pens; refills for markers; highlighting markers; drawing rulers; drawing rulers for blackboards; drafting rulers; compasses for drawing; correcting tapes for office use; correcting tapes for type; correcting fluids for office use; paper clips; letter clips for offices; stapling presses being non-electric staplers for paper; electric staplers for offices; paper staples; staples for offices; glue for office use; glue for stationery purposes; glues for household use; glue sticks for stationery; adhesive tapes for stationery use; adhesive packing tape for stationery and household use; charcoal pencils; charcoal pencils for drawing; charcoal pencils for artists; binders for office use; document files; file folders; modeling clay; modeling paste; paint trays; blackboard erasers; drawing markers for blackboards; bookmarkers; engraving plates; cardboard tubes; glue for stationery or household use
Class 18:
Backpacks; sports bags; hip bags; handbags; all-purpose carrying bags; beach bags; bags for sports; bags of leather for packaging; bags made of imitation leather for packaging; suitcases; reusable shopping bags; school backpacks; shoe bags for travel; travel bags; document cases
Class 21:
Trash receptacles for household or kitchen use; household or kitchen utensils, namely, [specify the utensils by common commercial name]; thermally insulated containers for food and beverages; portable isothermal bags for maintaining temperature of food and beverages; thermally insulated containers for food; sports bottles for cooling beverages sold empty; small utensils in the nature of [specify type of utensils by common commercial name] and portable all-purpose containers for household and kitchen use, not made of precious metals or coated therewith; thermally insulated containers for food or beverages; thermally insulated bags for food or beverages; plastic storage containers for food for domestic use; thermally insulated containers for food; containers for cooling bottles, namely, portable, non-electric coolers; drinking vessels; kitchen containers; heat insulated containers for beverages; glasses being beverage ware; portable plastic containers for storing household goods; household utensils, namely, [specify utensils by common commercial name]; kitchen utensils, namely, [specify utensils by common commercial name]
ID Manual Online
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.
US Counsel Required
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. 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.
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.
/Karen Bracey/
Examining Attorney
Law Office 116
571-272-9132
karen.bracey@uspto.gov
RESPONSE GUIDANCE