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: 3/11/2014

 

 

This Office action is in response to applicant’s communication filed on February 19, 2014.

 

The applicant’s amended color drawing has been entered.

 

However, the applicant must respond to the following refusal and requirements:

 

Color Drawing with Color Claim in Application – Color Claim Withdrawn in Response – Color Not Material

 

The drawing shows the mark in color and the application included a claim of color as a feature of the mark.  In its response (subsequent to the filing of the application), applicant has asserted that color is not claimed as a feature of the mark and requests that the claim of color be deleted.  Amending the mark to delete color is permissible only if it would not materially alter the mark as originally filed.  See 37 C.F.R. §2.72(a)(2); TMEP §§807.07(c), 807.14 et seq.  In this case, such an amendment would not be a material alteration. 

 

However, drawings for marks for which color is not claimed must be depicted in black and white only.  37 C.F.R. §2.52.  Therefore, applicant must submit a new drawing showing the mark only in black and white, and provide an amended mark description with all reference to color deleted.  Pending receipt of a substitute drawing and amended mark description, the request to delete color from the mark is denied.

 

Section 2(d) Refusal – Likelihood of Confusion – Partial Refusal

 

In its response, applicant did not address this issue, which was previously raised in the Office action mailed on August 26, 2013.

 

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 cited registrations, previously sent to applicant.

 

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.

 

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 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).

 

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.  Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing 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)). 

 

 

Despite the differences, the applicant’s mark and all cited marks share the confusingly identical sounding and similar appearing word PLAY.

 

 

With respect to applicant’s and registrants’ goods, the question of likelihood of confusion is determined based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-70, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).

 

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.

 

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).

 

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

 

This refusal is continued and maintained.

 

Refusal Pertains to More than One Class – One Class Excepted

 

The stated refusal refers to International Classes 003 and 025 only and does not bar registration in the other class.

 

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal. In addition, applicant may respond by doing one of the following:

 

(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 was previously sent to applicant. 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

 

In its response, applicant did not address this issue, which was previously raised in the Office action mailed on August 26, 2013.

 

Applicant has not specified a filing basis for the application. An application must specify and meet the requirements of at least one filing basis. 37 C.F.R. §2.32(a)(5); TMEP §806.

 

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).

 

This requirement is continued and maintained.

 

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

 

An application based on a bona fide intention to use the mark in commerce must include the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20:

 

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)

 

_____________________________

(Print or Type Name and Position)

 

_____________________________

(Date)

 

Identification of Goods – Clarification Required

 

In its response, applicant did not address this issue, which was previously raised in the Office action mailed on August 26, 2013.

 

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.

 

Although identifications of goods and/or services may be amended to clarify or limit the goods and/or 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. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

This requirement is continued and maintained.

 

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.

 

 

 

/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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 3/11/2014 FOR U.S. APPLICATION SERIAL NO. 85922031

 

Your trademark application has been reviewed.  The trademark examining attorney assigned by the USPTO to your application has written an official letter to which you must respond.  Please follow these steps:

 

(1)  Read the LETTER by clicking on this link or going to http://tsdr.gov.uspto.report/, entering your U.S. application serial number, and clicking on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification. 

 

(2)  Respond within 6 months (or sooner if specified in the Office action), calculated from 3/11/2014, using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. 

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions. 

 

(3)  Questions about the contents of the Office action itself should be directed to the trademark examining attorney who reviewed your application, identified below. 

 

/Andrew Rhim/

Andrew Rhim

Law Office 101

Phone (571) 272-9711

E-mail: andrew.rhim@uspto.gov

 

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp. 

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.