UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

EXAMINER’S AMENDMENT/PRIORITY ACTION

 

 

STRICT DEADLINE TO RESPOND TO THIS LETTER 

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.

 

ISSUE/MAILING DATE:

 

PRIORITY ACTION

 

ISSUES APPLICANT MUST ADDRESS:  On October 13, 2010, the trademark examining attorney and Susan Hwang discussed the issues below.  Applicant must timely respond to these issues.  See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §§708, 711.

 

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 – PARTIAL AS TO SPECIFIC GOODS

THIS REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN, NAMELY, FITTED COVERS FOR BOATS AND MARINE VEHICLES

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1603623 and 2976242.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

 

COMPARISON OF THE MARKS

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

 

Applicant’s mark is MALIBU.  The mark in U.S. Registration No. 1603623 is MALIBU stylized.  The mark in U.S. Registration No. 2976242 is MALIBU.  Applicant’s mark and the marks in the cited registration are identical in sound, meaning or connotation and commercial impression, namely, MALIBU.

 

COMPARISON OF THE GOODS

 

If the goods and/or services of the respective parties are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

Applicant’s goods to which this refusal apply are fitted covers for boats and marine vehicles.  The goods in U.S. Registration Nos. 1603623 and 2976242 are boats.  Applicant’s goods are similar in kind and/or closely related to registrant’s goods because applicant’s fitted covers for boats and marine vehicles are used in connection with registrant’s boats to cover the boats.  If the marks of the respective parties are identical, the relationship between the goods and/or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).

 

Applicant may wish obviate the Section 2(d) refusal by deleting fitted covers for boats and marine vehicles from the identification.

 

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, 1025 (Fed. Cir. 1988).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

REQUIREMENT(S)

 

Applicant must respond to the requirement(s) set forth below.

 

 

CLASSIFICATION AND IDENTIFICATION OF GOODS

 

The wording “cart brackets; canopies and canopy grommets for grills; grill heat shields; and grill heat shield plates” in the identification of goods is indefinite and must be clarified because the wording does not indicate the exact nature of the goods with enough specificity for proper identification and classification of the goods.  See TMEP §1402.01.  The wording may indicate goods classified in additional classes.  Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP §1403.01.  Applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, applicant must describe the product and its intended uses.  See id.

 

Generally, a trademark examining attorney will recommend acceptable substitute wording for unacceptable identifications of goods and/or services.  In this case, however, because the nature of the goods and/or services is unclear from the application record, the trademark examining attorney is unable to suggest any alternative wording.  See TMEP §1402.01(e).  Applicant is encouraged to contact the examining attorney to work out acceptable language for the indefinite wording.

 

For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.  See TMEP §1402.04.

 

Applicant may adopt the following identification of goods, if accurate: 

 

Wheelbarrows; dollies; fitted covers for boats and marine vehicles; hand carts for carrying weighted objects; utility trailers for portable grills; carts for grills, International Class 12; and/or

 

Cart brackets, namely, (indicate common commercial name for goods), International Class (classification dependent upon common commercial name for goods); and/or

 

Canopies, namely, canvas canopies, International Class 22; and/or

 

Canopies, namely, (indicate common commercial name for goods) and canopy grommets for grills, namely, (indicate common commercial name for goods), International Class (classification dependent upon common commercial name for goods); and/or

 

Grill heat shields, namely, (indicate common commercial name for goods), International Class (classification dependent upon common commercial name for goods); and/or

 

Grill heat shield plates, namely, (indicate common commercial name for goods), International Class (classification dependent upon common commercial name for goods).

 

An applicant may amend an identification of goods only to clarify or limit the goods; adding to or broadening the scope of the goods is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq. 

 

For an application with more than one international class, called a “multiple-class application,” an applicant must meet all of the requirements below for those international classes based on an intent to use the mark in commerce under Trademark Act Section 1(b):

 

(1)        LIST GOODS/SERVICES BY INTERNATIONAL CLASS:  Applicant must list the goods and/or services by international class; and

 

(2)        PROVIDE FEES FOR ALL INTERNATIONAL CLASSES:  Applicant must submit an application filing fee for each international class of goods and/or services not covered by the fee(s) already paid (confirm current fee information at http://www.uspto.gov, click on “View Fee Schedule” under the column titled “Trademarks”).

 

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).  The filing fees for adding classes to an application are as follows:

 

(1)  $325 per class, when the fees are submitted with an electronic response filed online at http://www.gov.uspto.report/teas/index.html, via the Trademark Electronic Application System (TEAS); or

 

(2)  $375 per class, when the fees are submitted with a paper response.

 

37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §§810, 1403.02(c).

 

ASSISTANCE

 

If applicant has questions about the application or this Office action, please telephone the assigned trademark examining attorney at the telephone number below.

 

 

EXAMINER'S AMENDMENT

 

APPLICATION HAS BEEN AMENDED:  In accordance with the authorization granted by the individual identified in the Priority Action section above, the trademark examining attorney has amended the application as indicated below.  Please advise the undersigned immediately of any objections.  TMEP §707.  Any amendments to the identification of goods and/or services may clarify or limit the goods and/or services, but may not add to or broaden the scope of the goods and/or services.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq.

                                                                                                         

 GOODS DO NOT ORIGINATE FROM THE GEOGRAPHIC LOCATION IN THE MARK

 

The following statement is added to the record:

 

The goods do not originate in from the geographic location named in the mark.

 

See 37 C.F.R. §2.61(b); TMEP §1210.03.

 

 

 

 

 

 

/Brendan D. McCauley/

Brendan D. McCauley

Examining Attorney

Law Office 114

571-272-9459

 

 

 

TO RESPOND TO THIS LETTER:  Use the Trademark Electronic Application System (TEAS) response form at http://teasroa.gov.uspto.report/roa/.  Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.

 

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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/.  Please keep a copy of the complete TARR screen.  If TARR shows no change for more than six months, 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/teas/eTEASpageE.htm.