To: | SunGate Enterprises LLLP (loril@fullsail.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85763580 - TRUST - N/A |
Sent: | 3/1/2013 10:50:41 PM |
Sent As: | ECOM115@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85763580
MARK: TRUST
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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: SunGate Enterprises LLLP
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 3/1/2013
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues 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
The following refusal is limited to the services identified in International Class 35 ONLY.
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 0592533, 1879245, and 1927725. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
Similarity of the Marks
The applicant’s mark is TRUST and design. The cited marks are TRUST in standard characters (U.S. Reg. Nos. 1879245, and 1927725) and TRUST is stylized font (U.S. Reg. No. 0592533).
The word portions of the marks are identical in sound, connotation, and commercial impression; therefore, the addition of a 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). While the proposed mark presents the term in stylized characters, a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
In the present case, the consumers are likely to call for the goods of the registrants and services of the applicant by the same term, TRUST. Therefore, the marks are highly similar and would lead to confusion when used on the same or similar goods and services.
Comparison of the Goods and Services
The applicant seeks registration of its mark for use in connection with “retail store services featuring convenience store items and gasoline” and “retail store services featuring locally made gifts and handicrafts.”
The registrant’s identified goods include “disinfecting, deodorizing, and cleansing detergent compound, laundry detergent, carpet sanitizer, hair shampoo, and hand lotion” (U.S. Reg. Nos. 0592533 and 1927725) and “clothing, namely, tops, shirts, blouses, sweaters, shorts, bottoms, trousers, slacks, suits, jackets and coats” (U.S. Reg. No. 1879245).
Absent restrictions in an application and registration, the identified goods and services are presumed to travel in the same channels of trade to the same class of purchasers. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d at 1268, 62 USPQ2d at 1005. Additionally, unrestricted and broad identifications are presumed to encompass all goods and services of the type described. See In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
The applicant has provided very broad descriptions of the items featured in its retail stores. The wording “convenience store items,” and “locally made gifts and handicrafts” is broad enough to encompass the clothing items, detergents, shampoos, and lotions identified in each of the respective registrations. As such, the applicant’s store is the channel of trade for the goods identified in the registrations, and consumers would encounter the marks under the same circumstance of sale. Therefore, registration is refused under Section 2(d) of the Trademark Act.
Applicant must also address the requirement set forth below.
Name and Citizenship of General Partners Required
The following format should be used:
“SunGate Enterprises, LLLP, a limited liability limited partnership organized under the laws of Colorado, composed of _______________ (specify name, legal entity, and citizenship of each individual general partner; and/or name, legal entity, and state or country of incorporation or organization of each juristic general partner).”
TMEP §803.03(b).
Comments
For this application to proceed toward registration, applicant must explicitly address each refusal and/or requirement raised in this Office action. If the action includes a refusal, applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register. Applicant may also have other options for responding to a refusal and should consider such options carefully. To respond to requirements and certain refusal response options, applicant should set forth in writing the required changes or statements.
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to live status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
/Nicholas A. Coleman/
Examining Attorney
Law Office 115
Phone: (571) 272-4917
Email: nicholas.coleman@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.