To: | `Intimo Inc. (trademarks@intimo.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85922031 - PLAY - N/A |
Sent: | 8/26/2013 5:31:30 PM |
Sent As: | ECOM101@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85922031
MARK: PLAY
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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: `Intimo Inc.
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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: 8/26/2013
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, 2.65(a); TMEP §§711, 718.03.
Section 2(d) Refusal – Likelihood of Confusion – Partial Refusal
THIS REFUSAL APPLIES ONLY TO CLASSES 003 AND 025.
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3679488, 3706948 and 4005352. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached cited registrations.
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 Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
In this case, the applicant’s mark PLAY (and design) is similar in sound and appearance to the marks PLAY, PLAY and PLAY (and design) in the cited registrations. The design elements of applicant’s mark and cited registered mark do not distinguish these marks. For a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods and/or services. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)). Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). In the present case, it is the word PLAY in applicant’s mark and the word PLAY in cited U.S. Registration No. 4005352 that is dominant and is accorded greater weight in the likelihood of confusion analysis because, as wording, it is more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods.
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.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
In this case, the identification set forth in the application and registrations has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods travel in all normal channels of trade, and are available to the same class of purchasers. Further, the application uses broad wording to describe the goods and this wording is presumed to encompass all goods of the type described, including those in the registrants’ more narrow identifications.
Refusal Pertains to More than One Class – One Class Excepted
(1) Deleting the classes to which the refusal pertains;
(2) Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition in the class to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for such classes, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
Prior Pending Application – Potential Partial Refusal
THIS POTENTIAL REFUSAL APPLIES ONLY THE GOODS “Pre-moistened cosmetic tissues, wipes and towelettes”.
Information regarding pending Application Serial No. 85574439 is also enclosed. The filing date of the referenced application precedes applicant’s filing date. There may be a likelihood of confusion between the two marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d). If the referenced application registers, registration may be refused in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed application.
If applicant believes there is no potential conflict between this application and the earlier-filed application, then applicant may present arguments relevant to the issue in a response to this Office action. The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.
No Basis Indicated
An application may be filed based on any of the following:
(1) Use of the mark in commerce under Trademark Act Section 1(a);
(2) A bona fide intention to use the mark in commerce under Section 1(b);
(3) A claim of priority under Section 44(d) that is based on an earlier-filed foreign application, and that has been filed within six months of the filing date of the foreign application; and/or
(4) A foreign registration of a mark in applicant’s country of origin under Section 44(e).
15 U.S.C. §§1051(a)-(b), 1126(d)-(e); 37 C.F.R. §2.34(a)(1)-(a)(4); TMEP §806.01(a)-(d).
Therefore, applicant must (1) amend the application to specify at least one filing basis, and (2) satisfy all the requirements for the basis or bases asserted. TMEP §806.
Depending on the circumstances, applicant may be entitled to assert more than one of the above bases. When claiming more than one basis, applicant must (1) satisfy all requirements for each basis claimed; (2) state that more than one basis is being asserted; and (3) list separately each basis, followed by the goods or services to which that basis applies. 37 C.F.R. §2.34(b)(2); TMEP §806.02(a).
Although multi-basis applications are permitted, applicant cannot assert both use in commerce and intent to use for the same goods or services. 37 C.F.R. §2.34(b)(1); TMEP §806.02(b).
Requirements for an Application Based on Section 1(a): Use in Commerce
An application based on use of the mark in commerce must include the following:
(1) The following statement: “The mark is in use in commerce, as defined by 15 U.S.C. §1127, and was in use in such commerce on or in connection with the goods or services listed in the application as of the application filing date;”
(2) The date of first use of the mark anywhere on the goods or in connection with the services;
(3) The date of first use of the mark in commerce as a trademark or service mark;
(4) One “specimen” that shows the mark used on the goods, or in connection with the services, for each class of goods and services (i.e., shows how applicant actually uses the mark in commerce). If a specimen was not submitted with the initial application, applicant must submit the following statement: “The specimen was in use in commerce at least as early as the application filing date;” and
(5) Verification, in an affidavit or signed declaration under 37 C.F.R. §2.20, of the above statements and dates of use.
See 15 U.S.C. §1051(a); 37 C.F.R. §§2.34(a)(1), 2.59(a), 2.193(e)(1); TMEP §806.01(a).
Requirements for an Application Based on Section 1(b): Intent-to-Use
Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the filing date of the application.
15 U.S.C. §1051(b)(3)(B); 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 37 C.F.R. §2.193(e)(1).
Declaration Under 37 C.F.R. §§2.20
Applicant may use the following declaration:
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 all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________
(Signature)
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(Print or Type Name and Position)
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(Date)
Identification of Goods – Clarification Required
The wording “Apparel IC 003 US 001 004 006 050 051 052. G and SCosmetics, namely, nail polish, lipstick, lip gloss, lip liner, non-medicated lip balm, blush, foundation, eye shadow, eye liner, mascara, facial concealers, and facial powder, fragances for personal use, namely perfume, cologne, and after shave, non-medicated skin care products, namely, scrubs, toners, conditioners, exfoliators, and moisturizers; deodorants and antiperspirants; face, nail, and body lotions, creams, gels, masks and sprays; sun screen preparations, namely, lotions, creams, gels and sprays; non-medicated face and body skin lighteners; hair care products, namely, shampoo, conditioner, gel, oil, mousse, spray and tonic; non-medicated bath care products, namely, salts, crystals, beads, gels, oils and bubble bath; essential oils for personal use; pre-moistened cosmetic tissues, wipes and towelettes. IC 009. US 021 023 026 036 038. G and S: Protective eyewear, sports eyewear; eyeglasses IC 025. US 022 039. G and S: Clothing, namely, jackets, coats, sweatshirts, sweaters, shirts, shorts, pants, dresses, skirts, blouses, neckties, swimwear, track suits, bathrobes, sleepwear, belts, hats, caps, visors, headbands, gloves, scarves, undewear, socks and shoes” in the identification of goods must be clarified because it is too broad and it includes goods in other international classes. See TMEP §§1402.01, 1402.03.
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.
Applicant may adopt the following identification of goods, if accurate:
“Cosmetics, namely, nail polish, lipstick, lip gloss, lip liner, non-medicated lip balm, blush, foundation, eye shadow, eye liner, mascara, facial concealers, and facial powder, fragrances for personal use, namely perfume, cologne, and after shave, [insert clarification of “non-medicated skin care products,” e.g., non-medicated skin care preparations], namely, scrubs, toners, conditioners, exfoliators, and moisturizers; deodorants and antiperspirants; face and body lotions, creams, gels, masks and sprays; [insert clarification of “nail lotions, creams, gels, masks and sprays,” e.g., nail strengthening lotions, nail cream, nail gels, nail hardening masks, and nail spray varnish]; sun screen preparations, namely, lotions, creams, gels and sprays; non-medicated face and body skin lighteners; hair care products, namely, shampoo, conditioner, gel, oil, mousse, spray and tonic; non-medicated bath care products, namely, salts, crystals, beads, gels, oils and bubble bath; essential oils for personal use; pre-moistened cosmetic tissues, wipes and towelettes, in International Class 003.”
“Protective eyewear, sports eyewear; eyeglasses, in International Class 009.”
“Clothing, namely, jackets, coats, sweatshirts, sweaters, shirts, shorts, pants, dresses, skirts, blouses, neckties, swimwear, track suits, bathrobes, sleepwear, belts, hats, caps, visors, headbands, gloves, scarves, underwear, socks and shoes, in International Class 025.”
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.
Additional Classes
The application identifies goods that are classified in at least three (3) classes; however, the fees submitted are sufficient for only one (1) class. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.
Therefore, applicant must either (1) restrict the application to the number of class(es) covered by the fee(s) already paid, or (2) submit the fees for the additional class(es).
The filing fee for adding classes to an application is as follows:
(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; 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.
Delete TM Symbol
Mark Description Incomplete – Does Not Reference Colors
If black, white, and/or gray are not being claimed as a color feature of the mark, applicant must exclude them from the color claim and include in the mark description a statement that the colors black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark. See TMEP §807.07(d).
The following mark description is suggested, if accurate:
The mark consists of the word "PLAY" in the color green with an orange triangle in place of the letter "A".
Response Guidelines
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. However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date 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 response should address each refusal and/or requirement raised in the Office action. If a refusal has issued, applicant can argue against the refusal; i.e., applicant can submit arguments and evidence as to why the refusal should be withdrawn and the mark should register. To respond to requirements, applicant should set forth in writing the required changes or statements and request that the Office enter them into the application record.
The response must be personally signed or the electronic signature manually entered by applicant or someone with legal authority to bind applicant (i.e., a corporate officer of a corporate applicant, the equivalent of an officer for unincorporated organizations or limited liability company applicants, a general partner of a partnership applicant, each applicant for applications with multiple individual applicants). TMEP §§605.02, 712.
/Andrew Rhim/
Andrew Rhim
Law Office 101
Phone (571) 272-9711
E-mail: andrew.rhim@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.