To: | International Paper Company (stephanie.haupt@ipaper.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85876014 - ENDURANCE - N/A |
Sent: | 4/17/2013 10:45:17 AM |
Sent As: | ECOM110@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85876014
MARK: ENDURANCE
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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: International Paper Company
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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FIRST 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: 4/17/2013
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
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Here, the applicant applied to register the mark ENDURANCE for paperboard in International Class 16.
The registered marks are ENDURANCE for paperboard in International Class 16 and ENDURANCE for blank and printed paper labels and label tapes; plastic sheets and labels for writing, printing and marking; blank and printed labels, not of textiles; blank and printed paper signs; blank and printed paper identification tags; blank and printed labels and characters solely adapted for mounting on modular rails and modular rails solely adapted therefor in International Class 16.
Similarity of the Marks
In the present case, applicant’s mark is ENDURANCE and registrants’ marks are ENDURANCE. Thus, the marks are identical in terms of appearance and sound. In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrants’ respective goods and/or services.
Therefore, the marks are confusingly similar.
Relationship Between the Goods
U.S. Registration No. 2948206
Absent restrictions in an application and/or registration, the identified goods and/or 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/or 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).
In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and/or services travel in all normal channels of trade, and are available to the same class of purchasers. Further, the application use(s) broad wording to describe the goods and/or services and this wording is presumed to encompass all goods and/or services of the type described, including those in registrant’s more narrow identification. Simply stated, it is presumed that the applicant’s paperboard is used for good such as signs and identification tags.
U.S. Registration No. 2919450
Absent restrictions in an application and/or registration, the identified goods and/or 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/or 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).
In this case, the identifications set forth in the application and registration(s) are identical and have no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and/or services travel in all normal channels of trade, and are available to the same class of purchasers. See Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012). Accordingly, the goods and/or services of applicant and the registrant(s) are considered related for purposes of the likelihood of confusion analysis.
Accordingly, since there is no overriding factor to distinguish applicant’s mark from the marks already registered, registration must be refused because the average purchaser would be likely to conclude that applicant’s goods and those cited in U.S. Registration Nos. 2919450 and 2948206 emanate from a common source of origin.
/Andrea Koyner Nadelman/
Andrea Koyner Nadelman
Trademark Examining Attorney
Law Office 110
571-272-9370
andrea.nadelman@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.