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. 79299968
Mark: MAGNUS
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Correspondence Address: |
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Applicant: SECRETLAB SG PTE. LTD.
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
International Registration No. 1565223
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 (see http://www.gov.uspto.report/trademarks-application-process/abandoned-applications for information on abandonment). To confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database at http://tsdr.gov.uspto.report/, 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).
SUMMARY OF ISSUES APPLICANT MUST ADDRESS
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES TO CLASS 20 ONLY
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.
The applied-for mark is MAGNUS for use with “Adjustable seat; armchairs; arm rests for furniture; chair beds; chair cushions; chair pads; chairs; chairs [seats]; chairs being furniture; chairs being office furniture; chairs for computer workstations; computer furniture; contour chairs; cushions; air cushions, not for medical purposes; ergonomic furniture; furniture; furniture fittings, not of metal; furniture for computers; furniture for use in relation to computers; furniture for offices; furniture for the home; furniture upholstered in leather or imitation leather; head supporting pillows; pillows; reclining armchairs; reclining chairs; seats; swivel chairs; tables; table legs; table tops; side tables; work tables; table leaves; office tables; folding tables; writing tables; computer tables; tables of metal; bases for tables; conference tables; tables [furniture]; table and chair sets; height adjustable tables; tables in the nature of furniture” in Class 20.
The registered mark is THEODORE MAGNUS for use with “Air mattresses for recreational use and not for medical purposes; armchairs; baby changing mats; beds; benches; plastic bins; wood bins; bookcases; plastic boxes; wood boxes; camping mattresses; chaise lounges; chests of drawers; non-metallic closures for containers; clothes hangers; non-metal hooks; console tables; non-metal and non-paper containers for storage or transport; deck chairs; furniture parts, namely, feet for furniture; flower-pot pedestals; flower-stands; footstools; furniture; furniture shelves; non-metal house numbers; inflatable furniture; lap desks; medicine cabinets; mirrors; nesting boxes for household pets; office furniture; picture frames; pillows; plate racks; screens being furniture; chairs; shelves for storage; residential shelving units and component parts thereof, namely, shelves and brackets sold as a unit; shoe dowels, not of metal; shower chairs; sideboards; sleeping pads; sleeping mats; sofas; stakes, not of metal, for plants and trees; step stools, not of metal; stools; stoppers for bottles, not of glass, metal or rubber; tables; mannequins; tent pegs, not of metal; plastic trays for foodstuff packaging; wardrobes; wind chimes” in Class 20.
The marks create the same commercial impression because of the common element, MAGNUS. 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).
The goods are related because both marks are or will be used on broadly defined furniture items and their fittings and components. Because the goods overlap, they are related.
Because the marks are similar, and because the goods are related, there is a likelihood of confusion as to the source of the goods.
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Therefore, registration is refused.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
The identification of goods is indefinite and must be clarified because not all of the goods are clearly identified and because the identification includes brackets, as outlined below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
In Class 16, the wording “holders for desk accessories; … holders being office requisites; holders being articles of stationery” is not acceptable because it does not identify the specific goods which the holders contain, such as pens.
The wording “office requisites for domestic use; office requisites, except furniture” is not acceptable because the specific “office requisites” are not identified by their common commercial names, such as pens and pencils.
Therefore, applicant must remove the brackets from the identification and incorporate any parenthetical or bracketed information into the description of the goods and/or services.
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably narrowed. See 37 C.F.R. §2.71(a); TMEP §§1402.06, 1904.02(c)(iv). Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably narrowed. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. 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 may adopt the following identification, if accurate:
International Class 9: Computer mouse pads; mouse pads; mouse mats; mats for use with a computer mouse; mouse mats for use with computer apparatus; wrist rests for use with computer peripherals; wrist supports for use with computer peripherals; wrist rests for computer mouse users; wrist rests for use with computers; arm rests for use with computers; computer swivelling stands; stands for computer equipment; computer peripherals; computer peripheral apparatus; computers and computer peripheral devices
International Class 16: Blotter; blotters; desk blotters; desk pads; desk mats; portable desk mats; desk pads of leather; holders for desk accessories, namely, holders for (identify the desk accessories by the common commercial names); stationery holders for desks; holders being office requisites, namely, holders for (identify the office requisites by the common commercial names); holders being articles of stationery, namely, holders for (identify what they hold by the common commercial names); writing implement holders for use on desks; office requisites for domestic use, namely, (identify the office requisites by the common commercial names); office requisites, except furniture, namely, (identify the office requisites by the common commercial names)
International Class 20: Adjustable seat; armchairs; arm rests for furniture; chair beds; chair cushions; chair pads; chairs; chairs; chairs being furniture; chairs being office furniture; chairs for computer workstations; computer furniture; contour chairs; cushions; air cushions, not for medical purposes; ergonomic furniture; furniture; furniture fittings, not of metal; furniture for computers; furniture for use in relation to computers; furniture for offices; furniture for the home; furniture upholstered in leather or imitation leather; head supporting pillows; pillows; reclining armchairs; reclining chairs; seats; swivel chairs; tables; table legs; table tops; side tables; work tables; table leaves; office tables; folding tables; writing tables; computer tables; tables of metal; bases for tables; conference tables; tables; table and chair sets; height adjustable tables; tables in the nature of furniture.
RESPONSE GUIDELINES
For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Please note, TEAS Plus applicants are subject to additional requirements. 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.
Email address required. Applicant must provide applicant’s email address, which is a requirement for a complete application. See 37 C.F.R. §2.32(a)(2); Mandatory Electronic Filing & Specimen Requirements, Examination Guide 1-20, at III.A. (Rev. Feb. 2020). Applicant’s email address cannot be identical to the listed primary correspondence email address of any attorney retained to represent applicant in this application. See Examination Guide 1-20, at III.A.
Applicant must be represented by a U.S.-licensed attorney 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 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 at http://www.gov.uspto.report/trademarks-getting-started/why-hire-private-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.
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 at http://teas.gov.uspto.report/wna/ccr/car. The newly-appointed attorney must submit a TEAS Response to Examining Attorney Office Action form at http://teas.gov.uspto.report/office/roa/ 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.
/Eugenia K. Martin/
Eugenia K. Martin
Examining Attorney
Law Office 114
571-272-9458
eugenia.martin@uspto.gov
RESPONSE GUIDANCE