To: | JC Marketing, Inc. (jbrunton1@aol.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85378860 - OK - 011-46 |
Sent: | 6/4/2012 9:33:25 PM |
Sent As: | ECOM111@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85378860
MARK: OK
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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: JC Marketing, Inc.
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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.
ISSUE/MAILING DATE: 6/4/2012
THIS IS A FINAL ACTION.
This action addresses the applicant’s 04/11/12 response to the 10/10/11 office action. Upon careful review of the applicant’s response, the undersigned finds the arguments unpersuasive. As a result, the refusal is now made FINAL.
The applicant has amended the identification of goods to class 006: Metal garden spades and class 021: Household and kitchen utensils, namely, plastic and metal dustpans, metal and bamboo cooking and eating utensils, namely, dishes, pots and pans, bamboo brooms and non-electric bamboo rice steamers. This amendment has only removed earthenware and ceramic kitchenware and pots. This amendment does not avoid the 2d refusal against the registrant for class 020: non-metal handles for rakes, mops, brooms, and other garden, household and landscaping tools.
Applicant acknowledges that the wording “OK” is defined as “something that is all right.” The applicant further acknowledges that the wording would mean a product that is “all right.” It is accurate that the applicant’s mark would not infer to prospective consumers that the goods concern grips, however, the goods do travel within similar channels of trade. For instance, a consumer who encounters the registrant’s goods for non-metal handles for rakes, mops, brooms, and other garden and household and landscaping tools likely would be confused with the applicant’s goods, which include metal garden spades which fall within the scope of the broad wording “garden and landscaping tools, which include garden spades. In addition, the applicant’s goods will be considered in connection with the claimed goods. Here, the goods do not concern the handles, but do include similar if not identicial goods, namely household tools such as plastic and metal dustpans and cooking and eating utensils. The main difference between the parties’ marks is that the registrant sells the handles for the same or similar goods as the applicant’s claimed goods. For these reasons and the reasons idenfied below, the 2d refusal is maintained and now made FINAL.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark- “Ok” with a design is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3363660- “Mr. A-Ok Grip”. 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 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.
Comparison of Marks
Here, the proposed mark is “Ok” with a design. The registrant’s mark is “Mr. A-Ok Grip”. The marks share the wording “Ok”. The applicant appears to have deleted the wording “Mr.”, “A”, and “Grip”. The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.
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 whether marks are confusingly similar. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); TMEP §1207.01(c)(ii); see CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983); In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1267-68 (TTAB 2011).
Further, the addition of the design may be included within the “ok” in the registrant’s mark as well, which will further cause consumer confusion.
Comparison of Goods/Services
The applicant has amended the identification of goods to class 006: Metal garden spades and class 021: Household and kitchen utensils, namely, plastic and metal dustpans, metal and bamboo cooking and eating utensils, namely, dishes, pots and pans, bamboo brooms and non-electric bamboo rice steamers. This amendment has only removed earthenware and ceramic kitchenware and pots. This amendment does not avoid the 2d refusal against the registrant for class 020: non-metal handles for rakes, mops, brooms, and other garden, household and landscaping tools.
Applicant acknowledges that the wording “OK” is defined as “something that is all right.” The applicant further acknowledges that the wording would mean a product that is “all right.” It is accurate that the applicant’s mark would not infer to prospective consumers that the goods concern grips, however, the goods do travel within similar channels of trade. For instance, a consumer who encounters the registrant’s goods for non-metal handles for rakes, mops, brooms, and other garden and household and landscaping tools likely would be confused with the applicant’s goods, which include metal garden spades which fall within the scope of the broad wording “garden and landscaping tools, which include garden spades. In addition, the applicant’s goods will be considered in connection with the claimed goods. Here, the goods do not concern the handles, but do include similar if not identicial goods, namely household tools such as plastic and metal dustpans and cooking and eating utensils. The main difference between the parties’ marks is that the registrant sells the handles for the same or similar goods as the applicant’s claimed goods
Please see the attached websites that demonstrate that garden tools and household tools and replacement handles are sold to consumers under the same product name. [Captured October 10, 2011]
Proper Response
If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond to this final Office action by:
(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or
(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.
37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.
In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
/Nakia D. Henry/
Trademark Attorney (Law Office 111)
United States Patent and Trademark Office
Phone: (571) 272-7208
E-mail: Nakia.henry@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.