UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

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

 

 

 

OFFICE 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:

 

 

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.

 

Registration Refused – Likelihood of Confusion – Class 24 Only

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 1920554 for the goods in International Class 24.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

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.

 

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).

 

                        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 “SAMSUNG”.  Likewise, registrant’s mark is “SAMSUNG & Design”.

 

The term “SAMSUNG” is the dominant element in both applicant’s and registrant’s marks.  The marks are compared in their entireties under a Trademark Act Section 2(d) analysis.  See TMEP §1207.01(b).  Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); see TMEP §1207.01(b)(viii), (c)(ii). 

 

This is especially true in this case where the only element in the registrant’s mark that differs from the applicant’s mark is the design of a background shaded oval.  When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods and/or services.  Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729, 735 (TTAB 1976); TMEP §1207.01(c)(ii).

 

The word portions of the parties’ marks are identical in appearance, sound and meaning.  The addition of the design element does not obviate the similarity of the marks in this case.  See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).

 

The differences between applicant’s and registrant’s marks are very minor, and therefore insufficient to distinguish them.  Accordingly, the substantial similarity between applicant’s and registrant’s marks weighs very heavily in favor of a finding of a likelihood of confusion and against registration of applicant’s mark.

 

                        Comparison of the Goods

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, it is sufficient that the goods and/or services are related in some manner and/or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

 

The applicant’s goods subject to the likelihood of confusion are the goods in International Class 24.  These goods overlap with the registrant’s goods.  Therefore, the parties’ goods are identical, or extremely closely related.

 

The fact that applicant’s and registrant’s goods are identical or so closely related not only weighs heavily in favor of a likelihood of confusion for this du Pont factor, but makes confusion more likely when considering the du Pont factors of the similarity of the marks and the marketing channels. 

 

When considering the similarity of the parties’ marks, the marks do not have to be as similar for a likelihood of confusion to be found.  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).  Therefore, even though the marks of the parties are extremely similar in any case, any differences between the parties’ marks will carry less weight in the likelihood of confusion analysis than if the parties’ goods/services were not identical or so related.

 

When considering whether the parties’ marketing channels are similar, the fact that the parties’ goods/services are identical or closely related means the parties’ marketing channels are deemed to be identical as well.  Inasmuch as the goods/services are identical or closely related and there are no restrictions on the goods, we must assume that the goods move in the same channels of trade to the same customers. Schieffelin & Co. v. The Molson Cos. Ltd., 9 USPQ2d 2069 (TTAB 1989) ("[S]ince there are no restrictions with respect to channels of trade in either applicant's application or opposer's registrations, we must assume that the respective products travel in all normal channels of trade for those alcoholic beverages").  Therefore, because the parties’ goods/services are identical or so related, this du Pont factor now also weighs heavily in favor of a likelihood of confusion.

 

The fact that applicant’s and registrant’s goods/services are identical or extremely closely related weighs very heavily in favor of a finding of a likelihood of confusion and against registration of applicant’s mark.  Because the parties’ goods/services are identical or so related, two other du Pont factors also now weigh very heavily in favor of a finding of a likelihood of confusion and against registration of applicant’s mark.  Differences in the parties’ marks which might otherwise be significant are considered less significant and the parties’ marketing channels are deemed to be identical. 

 

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

 

 

Direct or Common Ownership of the Cited Mark

 

Applicant appears to own the cited registration, however, USPTO records show ownership in an entity other than applicant.  Therefore, applicant must prove ownership of these registrations.  See TMEP §812.01. 

 

Applicant can provide evidence of ownership of the marks by satisfying one of the following:

 

(1)  Record the assignment with the Office’s Assignment Services 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 No. 1920554.” 

 

TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73; TMEP §502.02(a).

 

Merely recording a document with the Assignment Services Branch does not constitute a response to an Office action.  TMEP §503.01(d).

Below is a sample of an acceptable declaration under 37 C.F.R. §2.20 as discussed under Number 3 above in this section:

The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that he/she is authorized to sign this declaration on behalf of applicant;  that applicant is the owner of U.S. Reg. No. 1920554; declares that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true. 

 

_____________________________

(Signature)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

 

Unity of Control

 

If no direct ownership of the cited registration/cited application exists, but applicant and registrant/cited applicant are related, the closeness of this relationship may be sufficient to obviate a likelihood of confusion in the public mind if the related companies constitute a single source. TMEP § 1207.07(a).  If applicant claims that applicant and registrant/cited applicant constitute a single source, applicant has the burden to demonstrate that a unity of control exists between applicant’s and registrant’s/cited applicant’s marks. TMEP § 1201.07(b).

 

Examples of a unity of control include the following.  If either the applicant or the registrant/cited applicant owns all of the other entity, and no contradictory evidence in the record exists, then the marks are deemed to establish a unity of control, emanate from a single source and obviate a likelihood of confusion.  This situation would apply to an individual who owns all of the stock of a corporation, and to a corporation and a wholly-owned subsidiary.  In this circumstance, applicant is merely required to state for the record that one entity owns all of the other entity. TMEP § 1201.07(b)(i).

 

If either the applicant or the registrant owns substantially all of the other entity, and contradictory evidence exists in the record, applicant must provide an affidavit or declaration under 37 CFR § 2.20 making such a claim.  This affidavit or declaration must state that one party controls the activities of the other party, including the selection, adoption and use of trademarks. TMEP § 1201.07(b)(ii).  

 

 

Informalities

 

1.         Identification and/or Classification of Goods/Services

 

The identification of goods/services is indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods/services.  If there is no common commercial or generic name, applicant must describe the products/services and intended consumer(s) as well as its main purpose(s) and intended use(s). 

 

The Office requires a degree of particularity necessary to identify clearly goods and/or services covered by a mark.  See In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007).  Descriptions of goods and services in applications must be specific, explicit, clear and concise.  TMEP §1402.01; see In re Cardinal Labs., Inc., 149 USPQ 709, 711 (TTAB 1966); Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954).

 

Some of the goods/services are indefinite and must be clarified.  Moreover, the goods/services could be classified in multiple classes.

 

In International Class 24 the wording “jersey” is indefinite and must be clarified.

 

The wording “moleskin” is indefinite and could be classified in multiple classes.  It must be clarified and listed in the proper classes.

 

The wording “silk” is indefinite and must be clarified.

 

The wording “woolen fabric” is indefinite; the type of woolen fabric must be specified.

 

Applicant may adopt the following identification of goods/services, if accurate.  See TMEP §1402.01.  The suggested revisions are highlighted or in capital letters. 

 

 

“MOLESKIN FABRIC FOR MEDICAL USE,” in International Class 5.

 

“UPHOLSTERY FOR VEHICLES,” in International Class 12.

 

“Handbags, pocket wallets, purses, umbrellas and parasols,” in International Class 18.

 

“Cotton thread and yarn, linen thread and yarn, rayon thread and yarn, sewing thread and yarn, silk thread and yarn, spun cotton, spun silk, woolen thread and yarn and fiberglass thread and yarn for textile purposes,” in International Class 23.

 

“Cotton fabrics, elastic woven material, flannel, jersey MATERIAL, knitted fabric, linen cloth, moleskin FABRIC NOT FOR MEDICAL USE, rayon fabric, ramie fabric, silk [SPECIFY THE USE OF THE SILK, E.G., SILK CLOTH, SILK FABRICS, ETC.], upholstery FABRICS, velvet and woolen fabric [SPECIFY TYPE OF WOOLEN FABRIC, E.G., WOOL YARN FABRICS, KNITTED FABRICS OF WOOL YARN, ETC.], each type of fabric being for use in making clothing, upholstery, curtains, draperies, and bedspreads,” in International Class 24.

 

“Boots, shoes, sandals, slippers, sports shoes, jacket and pants sets COMPRISED OF JACKETS AND PANTS, and undergarment combinations, frocks, socks, stockings, coats, gloves, hats, hosiery, jackets, jumpers, knitted shirts, knitted sweaters, track suits, lingerie, neckties, pants, shirts, skirts, suits, trousers and underclothing, NAMELY, UNDERWEAR,” in International Class 25.

 

 

Periodically the Office revises its international classification system and the policy regarding acceptable identifications of goods and services.  Identifications are examined in accordance with Rules of Practice and Office policies and procedures in effect on the application filing date.  37 C.F.R. §2.85(e)(1); TMEP §1402.14.  However, an applicant may voluntarily choose to follow policies and procedures adopted after the application was filed.  37 C.F.R. §2.85(e)(2).

 

Descriptions of goods and/or services found in earlier-filed applications and registrations are not necessarily considered acceptable identifications when a later-filed application is examined.  See TMEP §§702.03(a)(iv), 1402.14.

 

For guidance on writing identifications of goods and/or services, please use the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html, which is continually updated in accordance with prevailing rules and policies.  See TMEP §1402.04.

 

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

 

 

2.         Requirements for Multi-Class Applications

 

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 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).

 

 

3.         Claim of Ownership of Prior Registration(s)

 

If applicant is the owner of U.S. Registration No(s). 1634816, then applicant must submit a claim of ownership.  See 37 C.F.R. §2.36; TMEP §812.  A printout of the registration is enclosed.  The following standard format is suggested:

 

Applicant is the owner of U.S. Registration No(s). 1634816.

 

If applicant is not the owner of any of these registration(s), the applicant must state so for the record.

 

 

Examiner’s Amendment Recommended – If Applicable

 

Examiner’s Amendments cannot be issued for partial amendments.  However, if all of the  outstanding issues can be resolved through an Examiner’s Amendment, the applicant is encouraged to respond to this Office Action by amending the application in a telephone call with the examining attorney to expedite the processing of the application.  Generally, only the submission of arguments to overcome a substantive refusal or an informal requirement, a requirement for the submission of specimens, a particular document or declaration, or the payment of a fee cannot be handled over the telephone.

 

Responding to Office Action

 

The USPTO applies the following legal authorities when processing a trademark and service mark application: 

 

• The Trademark Act of 1946;
• The Trademark Rules of Practice;
• Precedential court and Trademark Trial and Appeal Board decisions;
• USPTO’s Trademark Manual of Examining Procedure (TMEP) (6th ed. 2009); and
• USPTO’s Trademark Trial and Appeal Board Manual of Procedure (TBMP). 

 

15 U.S.C. §§1051 et seq.; 37 C.F.R. Parts 2, 3, 6, 7, 10, and 11; see TMEP intro., §§101, 107, 110. 

 

Official USPTO letters and notices sent to applicants generally refer to one or more of these legal resources.  Both the Trademark Act and the Trademark Rules of Practice can be viewed online at the Trademarks’ Home Page at http://www.gov.uspto.report/trademarks/index.jsp by clicking on “Laws & Regulations” on the left side of the screen.  The TMEP is also available via the Home Page by clicking on “Manuals, Guides, Official Gazette” on the left side of the screen.  Trademark Trial and Appeal Board decisions and the TBMP can be found at the website at http://www.gov.uspto.report/trademarks/process/appeal/index.jsp.

 

Please note that applicant must explicitly address all issues raised in this Office Action.  If the issues are substantive refusals, the applicant may respond with arguments and evidence to overcome the refusal.  To respond to requirements/informalities the applicant must specifically request that changes to the record be made.

 

There is no required format or form for responding to an Office Action.  The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office Actions online at http://www.gov.uspto.report/teas/index.html.

 

If applicant responds on paper via regular mail, applicant should include the following information on all correspondence with the Office:  (1) the name and law office number of the trademark examining attorney, (2) the serial number and filing date of the application, (3) the date of issuance of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark.  37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

 

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark/service mark applications and registrations.  To access the TARR database, applicant will need to provide an application serial number or registration number.  The TARR database is available 24 hours a day, 7 days a week.

 

 

 

/Michael A. Wiener/

Trademark Attorney - Law Office 108

Phone: (571) 272-8836

E-Mail: michael.wiener@uspto.gov

(informal only)

 

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.