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: 7/18/2014

 

TEAS PLUS APPLICANTS – TO MAINTAIN REDUCED FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus application form must (1) continue to submit certain documents online using TEAS, including responses to Office actions (see TMEP §819.02(b) for a complete list of these documents); (2) accept correspondence from the USPTO via e-mail throughout the examination process; and (3) maintain a valid e-mail address.  See 37 C.F.R. §2.23(a)(1), (a)(2); TMEP §§819, 819.02(a).  TEAS Plus applicants who do not meet these three requirements must submit an additional fee of $50 per international class of goods and/or services.  37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04.  However, in certain situations, authorizing an examiner’s amendment by telephone will not incur this additional fee.  

 

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.

 

Summary of Issue(s) Applicant Must Address

• Section 2(d) Likelihood of Confusion
• Disclaimer
• Clarification of Entity

 

SECTION 2(D) LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 2588756, 2713693, 2610325, 2813280, 3389323, 3911329, 3923318, 4026386, and 4134446.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration(s).

 

In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services. Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier DesVignes, 107 USPQ2d 1930, 1938 (TTAB 2013) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see TMEP §1207.01.

 

COMPARISON OF MARKS

 

In this case, applicant’s mark consists of “KARMA GIFTS” in standard character. The nine  registered marks consist of the following: KARMA KULA, DEMON SHREDDERS; KARMA KULA, MYSTIC WARRIOR; KARMA KOP; KARMA KULA; and KARMAPAK (all in standard character); KK KARMA KULA (two composite word and design marks).

 

While marks must be compared in their entireties for similarities in sound, appearance, connotation and commercial impression, it is well-settled that certain portions of a mark are more dominant than others. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (citation omitted). For example, the first word in a trademark or service mark is considered the dominant portion of a mark because consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).

 

Likewise, descriptive or generic wording is typically less significant and given less weight when comparing marks. In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (matter that is descriptive of or generic for an applicant’s goods and/or services is less significant or less dominant in relation to other wording in a mark). This is because these terms generally contain very little source-identifying value. See In re Bongrain Int’l (Am.) Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir. 1990). Indeed, the Trademark Trial and Appeal Board has stated that “in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper [for the Examining Attorney to state that], for rational reasons, more or less weight has been given to a particular feature of a mark . . . .” In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1267 (TTAB 2011) (citation omitted).

Applying these principles to the applicant’s mark the dominant portion (i.e. the wording that contains the greatest source identifying significance) is “KARMA” as it is the first word in the mark, and the wording that follows “GIFTS” is descriptive of applicant’s goods, namely, that its goods consist of gift items or that the goods can be given as “gifts” to individuals.

Concerning seven registered marks in standard character, the dominant wording in all 7 of those marks is also “KARMA” as it is the first word in those marks and the wording that follows is used as a model or type designation as opposed to the source of the goods. In other words, a consumer will readily view “KARMA” as the manufacturer or source of the backpack and the wording “KULA,” “DEMON SHREDDERS,” “MYSTIC WARRIOR,” “KOP,” and “PAK” as different model of the same goods offered by “KARMA” similar to “HONDA CIVIC, HONDA ACCORD.”

Concerning the two composite word and design marks “KK” KARMA KULA”, for a composite mark that contains words and a design, the word portion is more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods.  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)). This is especially true when the design element (“KK”) present in the registered marks, merely reinforces the commercial impression engendered by the word portion of the marks “KARMA KULA”. See In re American Safety Razor, Co. 2 U.S.P.Q.2d 1459, 1460 (1987) (sun design in the cited registered mark merely reinforces the commercial impression engendered by the word portion). Thus, the dominant portion of these two registered marks is “KARMA KULA.” A consumer will readily view “KARMA” as the manufacturer or source of the backpack and the wording “KULA,” as different model of the same goods offered by “KARMA.”

 

Accordingly, applicant’s mark is confusingly similar to all 9 registered marks for the purpose of Section 2(d).

 

COMPARISON OF GOODS

 

A likelihood of confusion is enhanced by the relatedness of the parties’ goods. The applicant’s goods consist of the following items in International Class 18: Backpacks; Beach bags; Carry-all bags; Change purses; Purses; Suitcases; Tote bags; Travel bags; Umbrellas; Umbrellas for children; Wallets

 

The goods in the registered marks consist of the following items:

• All-purpose sport bags,
• all-purpose carrying bags,
• backpacks, book bags, sports bags, bum bags,
• wallets and handbags,
• beach bags
• briefcases, suitcases, carry-on bags, clutch bags, daypacks,
• duffel bags, fanny packs, garment bags for travel,
• knapsacks, luggage, messenger bags, overnight bags, rucksacks, satchels, shoulder bags, straps for handbags,
• straps for luggage,
• tote bags,
• umbrellas
• athletic bags
• key cases

 

With respect to applicant’s and registrant’s goods and/or services, 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). In this case, the goods are identical in part in that both the applicant and the registrants manufacture the following items:

• backpacks
• beach bags
• carry-all bags
• suitcases
• tote bags
• umbrellas (which is broad enough to include “umbrellas” for children)
• wallets

Accordingly the above goods are related for the purpose of Section 2(d). The remaining items in applicant’s identification consist of “change purses,” “purses” and “travel bags.” As to these items, Evidence obtained from the Internet may be used to support a determination under Trademark Act Section 2(d) that goods and/or services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).        

Here, the attached evidence from FOSSIL, L.L. BEAN, and PATAGONIA, show that the manufactures of “change purses,” coin purses,” and “travel bags” also manufacture the goods in the registered mark. See attached evidence. Thus, these goods are related as well. Accordingly, registration is refused pursuant to Section 2(d) of the Trademark Act. Although applicant’s mark has been refused registration, applicant may present arguments and evidence in support of registration. However, applicant must comply with the requirements below.

DISCLAIMER REQUIRED

Applicant must disclaim “GIFTS” because it merely describes an feature, quality, or characteristic, of applicant’s goods, namely that its goods include “GIFT ITEMS” or will be consist of “GIFT SETS.” See attached definition of “GIFTS.” Thus, gifts is an unregistrable component of the mark.  See 15 U.S.C. §§1052(e)(1), 1056(a); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); TMEP §§1213, 1213.03(a). 

 fi

An applicant may not claim exclusive rights to terms that others may need to use to describe their goods and/or services in the marketplace.  See Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 1560, 21 USPQ2d 1047, 1051 (Fed. Cir. 1991); In re Aug. Storck KG, 218 USPQ 823, 825 (TTAB 1983).  A disclaimer of unregistrable matter does not affect the appearance of the mark; that is, a disclaimer does not physically remove the disclaimed matter from the mark.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 978, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. 

 

If applicant does not provide the required disclaimer, the USPTO may refuse to register the entire mark.  See In re Stereotaxis Inc., 429 F.3d 1039, 1040-41, 77 USPQ2d 1087, 1088-89 (Fed. Cir. 2005); TMEP §1213.01(b).

 

Applicant should submit a disclaimer in the following standardized format:

 

No claim is made to the exclusive right to use “GIFTS” apart from the mark as shown.

 

For an overview of disclaimers and instructions on how to satisfy this disclaimer requirement online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/disclaimer.jsp.

CLARIFICATION OF ENTITY

Applicant has identified itself as a corporation incorporated under the laws of Texas. The Owner field contains the name of an individual followed by the corporate designation “inc.” Applicant must clarify whether the owner is in fact an individual or if the name of the corporation itself is “Stephen Joseph, Inc.” TMEP §803.02(a).

 

If applicant is an individual, applicant should request that the entity be amended to “individual” and must indicate his or her country of citizenship.  See 37 C.F.R. §2.32(a)(3)(i); TMEP §803.04.  Alternatively, if applicant is a corporation, applicant must provide the legal name of the corporation and U.S. state or foreign country of incorporation or organization.  See 37 C.F.R. §2.32(a)(2), (a)(3)(ii); TMEP §§803.02(c), 803.03(c).

 

If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  TMEP §§1201, 1201.02(b).

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. 

                                                                   

In addition, applicant filed a TEAS Plus application and therefore must respond online using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp to avoid incurring an additional fee.  See 37 C.F.R. §2.23(a)(1), (b). 

 

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 active 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).

 

 

/Siddharth Jagannathan/

Siddharth Jagannathan

Trademark Examining Attorney

USPTO, Law Office 114

571-272-6563 (phone)

Siddharth.Jagannathan@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 7/18/2014 FOR U.S. APPLICATION SERIAL NO. 86246900

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click 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)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 7/18/2014 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.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.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@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.