UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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APPLICATION SERIAL NO. 85077424
MARK: MALIBU
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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: J. Baxter Brinkmann International Corpor ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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.
This Office action supersedes any previous Office action issued in connection with this application. On May 5, 2011, the examining attorney sent a final Office action in which were two errors. The final Office action is withdrawn. The first error was the failure to issue the refusal to register the mark under Section 2(d) of the Trademark Act with respect to U.S. Registration No. 2663321 based upon applicant’s goods for non-metal bins and registrant’s goods for plastic storage bins.
The second error was that the examining attorney incorrectly indicated that the goods: “Non-metal fasteners for use in boats, namely, metal self-aligning demountable snap fasteners consisting of press fasteners and press studs for use in attaching panels, hatches, floors and furniture in boats” are in International Class 26. The goods are properly classified in International Class 20. The examining attorney apologizes for these errors. This office action corrects those errors.
Thus, the refusal and the requirements related to an amended classification and identification of goods is noted below.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – PARTIAL AS TO NON-METAL BINS
THIS REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN, NAMELY, NON-METAL BINS
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2663321. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
Applicant’s mark MALIBU for goods including non-metal bins so resembles the mark MALIBU for plastic storage bins in U.S. Registration No. 2663321 as to be likely to cause confusion, to cause mistake, or to deceive. Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d).
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 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. Citigroup Inc. v. Capital City Bank Grp., Inc., ___ F.3d ___, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); 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 Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.
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)-(b)(v). Similarity in any one of these elements may be sufficient to find the marks 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).
Applicant’s mark is MALIBU. The mark in U.S. Registration No. 2663321 is MALIBU. Applicant’s mark and registrant’s mark are identical in appearance, sound, meaning or connotation and commercial impression.
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 non-metal bins. The goods in U.S. Registration No. 2663321 are plastic storage bins. Applicant’s goods and registrant’s goods are similar in kind and/or closely related because both are bins.
In this case, applicant’s goods and/or services are identified broadly. Therefore, it is presumed that the application encompasses all goods and/or services of the type described, including those in the registrant’s more specific identification, that the goods and/or services move in all normal channels of trade, and that they are available to all potential customers. Citigroup Inc. v. Capital City Bank Grp., Inc., ___ F.3d ___, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re La Peregrina Ltd., 86 USPQ2d 1645, 1646 (TTAB 2008); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); TMEP §1207.01(a)(iii).
In the present case, applicant’s non-metal binds are broad enough to encompass registrant’s plastic storage bins. Furthermore, where the marks of the respective parties are identical or virtually identical, there need be only a viable relationship between the relevant goods and/or services to support a finding of likelihood of confusion. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009); In re Wilson, 57 USPQ2d 1863, 1867 (TTAB 2001); see also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993). The fact that the goods are both bins is such a viable relationship.
Applicant may wish to delete these goods in order to obviate the refusal.
Couple the identical commercial impression along with the related nature of the goods and a consumer encountering both marks may wrongly assume that the goods are derived from a common commercial source.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Applicant must respond to the requirement(s) set forth below.
CLASSIFICATION AND IDENTIFICATION OF GOODS
Applicant is highly encouraged to contact the examining attorney regarding an acceptable classification and identification of goods.
The examining attorney notes that the goods “Non-metal fasteners for use in boats, namely, metal self-aligning demountable snap fasteners consisting of press fasteners and press studs for use in attaching panels, hatches, floors and furniture in boats” are properly classified in International Class 20.
The wording “non-metal wall mounted brackets for use with electric lighting fixtures, portable lighting products and grill and smoker accessories” in the identification of goods is indefinite and must be clarified because the nature of the goods are not indicated with enough specificity for proper identification and classification. See TMEP §1402.01. If the brackets are in the nature of hardware, the identification should be amended to indicate this information to clearly classify the goods in International Class 20. 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.
The wording “non-metal accessories and replacement parts for grills, namely, name plates, shelving and plastic and wood knobs” in the identification of goods is indefinite and must be clarified because the nature of the goods as either accessories or replacement parts is unclear for proper identification and classification of the goods. Applicant’s use of the wording accessories and replacement parts in the preface of the identification is indefinite for proper classification of the goods. If the goods are accessories, the goods should be classified in International Class 20. If the goods are replacement parts for grills or electric lighting fixtures, the goods should be classified in International Class 11 with the cooking grills and the lighting fixtures. In addition, the exact type of cooking grill should be specified i.e. barbecue, gas, electric, etc. 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.
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:
Non-metal replacement parts which are structural components for electric lighting fixtures, namely, caps, decorative hooks, decorative rods and plastic and wood knobs; non-metal replacement parts which are structural components for electric, gas, charcoal and barbecue grills, namely, name plates, shelving and plastic and wood knobs, International Class 11; and/or
Plastic decorative mounting hardware used in the assembling and securing of Christmas decorations, namely, hooks, stakes, supports and tree clips; non-metal casters; non-metal bins; storage racks; Hardware, namely, non-metal wall mounted brackets for use with electric lighting fixtures, portable lighting products and grill and smoker accessories; gazing globes; Non-metal accessories for electric lighting fixtures, namely, caps, decorative hooks, decorative rods and plastic and wood knobs; non-metal accessories for gas, charcoal, and barbecue grills, namely, name plates, shelving and plastic and wood knobs; Non-metal fasteners for use in boats, namely, metal self-aligning demountable snap fasteners consisting of press fasteners and press studs for use in attaching panels, hatches, floors and furniture in boats, International Class 20.
(1) LIST GOODS AND/OR 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). Applicant has paid for only one class. 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
/Brendan D. McCauley/
Examining Attorney
Law Office 114
571-272-9459
Brendan.McCauley@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 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 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.